- Human Power Of N Company v. Heartbeet Ltd.Institution deniedPTAB · Jan 11, 2022 · PGR2021-00094 · APJ Devon Zastrow Newman · PGR · Institution
The Board denied institution because Petitioner did not show that any challenged claim had an effective filing date on or after March 16, 2013, as required for PGR eligibility.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute a post-grant review, we must determine whether the information presented in the Petition, “if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). Upon consideration of the Petition and the Preliminary Response, for the reasons set forth below, we determine that Petitioner has not shown that the ’813 patent is eligible for post-grant review. Accordingly, we do not institute a post-grant review of the challenged claims of the ’813 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.200(b) (2021). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). Petitioner proposes construction of two terms, “inorganic nitrate” and “requiring a reduction in systolic blood pressure.” Pet. 26–27. Of these terms, Patent Owner does not propose a construction for “inorganic nitrate” (Prelim Resp. 7). For purposes of determining whether to institute trial of the challenged claims, we determine it is not necessary to construe “inorganic nitrate.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an AIA proceeding).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“We are persuaded that Petitioner’s proposed definition is unduly restrictive. The claims do not clarify the meaning of “requiring a reduction in systolic blood pressure”; hence, we rely on relevant disclosures in the specification and prosecution history. Phillips, 415 F.3d at 1312–19. The prosecution history adds no clarity to the meaning of this term. As noted by Patent Owner, the specification states that the claimed method seeks to lower the systolic blood pressure in a subject needing such a reduction “preferably to normal levels (about 140/80 mmHg”) and provides an example of a 43-year-old with hypertension whose “blood pressure was 142/99 on the day when the experiment started.” Prelim. Resp. 8–9. We agree with Patent Owner that these disclosures provide general guidance to the person of ordinary skill in the art that the upper bounds of normal systolic blood pressure is about 140 mmHg, and that a person “requiring a reduction in systolic blood pressure” is someone whose systolic blood pressure exceeds that general measurement. Moreover, as discussed above, Petitioner states that a person of ordinary skill in the art would have had a medical degree or equivalent study in fields such as “biochemistry, pharmacology, nutrition chemistry, or kinesiology” (Pet. 13) such that the term would have been interpreted by persons with a sophisticated understanding of human physiology according to the facts and circumstances presented and with the guidance of “about 140 mmHg” providing a general measurement guideline. We conclude that the plain and ordinary meaning of a person “requiring a reduction in systolic blood pressure” is a person having higher than about 140 mmHg systolic blood pressure.” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateNot shown unpatentable
“The test for written description support is “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date” based on an “objective inquiry into the four corners of the specification.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc). If this test fails, the application is not entitled to the benefit of the earlier filing date.” slip op. at 14
Claim construction§ 112 disclosurecites PhillipsPatents in suitUS 10,842,813 - Collegium Pharmaceutical, Inc. v. Purdue Pharma L.P., Purdue Pharmaceuticals L.P., And The P.F. Laboratories Inc.All claims unpatentablePTAB · Nov 19, 2021 · PGR2018-00048 · APJ Devon Zastrow Newman · PGR · Final written decision
Claims 1–17 are unpatentable for lack of written description and anticipation by the ’943 Publication; indefiniteness and lack of enablement were not shown.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“We are not persuaded that exclusion of the cited portions of Dr. Chambliss’ testimony or Exhibits 1073, 1074, 1075, 1082, 1083, 1084, 1085, 1086, 1088, and 1090 is warranted. While the parties disagree on the merits of Dr. Chambliss’ testimony as to whether PGGs were known to be gelling agents by persons of ordinary skill in the art at the time of the Priority Applications, Patent Owner does not persuade us that Dr. Chambliss fails to support his testimony with any reasonable logical or scientific basis. The exhibits that Patent Owner seeks to exclude, which include a patent, technical references, and a journal article, are relevant to the inquiry Dr. Chambliss performed in forming his opinion. We therefore do not see a basis for exclusion under FRE 702/703 or 37 C.F.R. § 42.64(c). Moreover, we find this evidence both admissible and relevant as it concerns a fundamental issue for our patentability analysis. Thus, we decline to exclude the evidence under FRE 401 or 402.” slip op. at 12
- Skill levelSkill level petitioner adoptedOther
“would have possessed “a degree in one or more fields of medicine, chemical engineering, chemistry, pharmaceutical science, and/or pharmacology and a number of years of industry training or experience in one or more of those fields.” Pet. 21 (citing Ex. 1002 ¶ 82). Petitioner further proposes that “[i]f the degree is a Ph.D[.], then the required industry experience need not be significant, e.g., two years or more, but if the technical degree is a B.S. or M.S., then the industry experience would be more significant, e.g., five years or more.” Id. We preliminarily adopted Petitioner’s definition of a POSA’s skill level in our Institution Decision as it was undisputed at the time and consistent with the evidence of record. Inst. Dec. 7–8. Neither Patent Owner nor Petitioner addresses the level of ordinary skill in the art in the post-institution briefing. We continue to adopt Petitioner’s proposed skill level for a POSA herein and have also taken into account the level of skill reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Applying this level of skill, we find that Dr. Chambliss and Dr. Constantinides are qualified to provide opinions as to the perspective and knowledge of a POSA. See Ex. 1002 ¶¶ 81–83; Ex. 2030 ¶¶ 58–63.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We agree with Patent Owner that the challenged claims recite methods of making formulations using recited features and ingredients. In addition, as we stated in our Decision on Institution, “[t]he claims define abuse deterrence in terms of when the dosage form is ‘subjected to t[a]mpering comprising heating at a temperature greater than about 45° C.’” Inst. Dec. 19 (quoting Ex. 1001, 41:50–52). Additionally, the claims and specification identify specific ingredients that can purportedly help achieve this abuse deterrence functionality. Id. Given these conclusions, further construction of “abuse deterrent,” which both parties generally agree relates to methods of making the drug dosage form less likely to be abused, is not necessary to resolve the issues before us.” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateUnpatentable
“Notwithstanding these individual teachings, we find that the specification fails to demonstrate that the inventors of the ’961 patent possessed a dosage form comprising a combination of the recited components that also satisfied the recited functionality. We are persuaded that the specification fails to provide sufficient guidance that would have led the POSA to create the recited dosage form. See Fujikawan 93 F.3d at 1571; In re Ruschig, 379 F.2d 990, 995 (CCPA 1967). Rather, “one is left to select[] from the myriads of possibilities encompassed by the broad disclosure, with no guide indicating or directing that this particular selection should be made rather than any of the many others which could also be made.” Ruschig, 379 F.2d at 995.” slip op. at 34
Patent outcomesUS 9,693,961 unpatentableClaim construction§ 102 anticipation§ 112 disclosurecites NautilusPatents in suitUS 9,693,961 - Tetra Tech Canada Inc. v. Georgetown Rail Equipment CompanyAll claims unpatentablePTAB · Aug 25, 2020 · IPR2019-00620 · APJ Kristina M Kalan · IPR · Final written decision
Claims 1–3, 7–13, and 16–20 are unpatentable as obvious; the contingent motion to amend with substitute claims 30–44 is denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have a bachelor’s degree in electrical engineering, computer engineering, mechanical engineering, computer science, physics, or a related field, and at least four years of experience (or the academic equivalent) in the field of computer or machine vision.” Pet. 21 (citing Ex. 1004 ¶ 42). Patent Owner states that, for purposes of its Response, “Patent Owner does not contest the level of ordinary skill in the art asserted by Petitioner.” PO Resp. 3. Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. In light of the record now before us, we find that a person of ordinary skill in the art would be an individual with at least a bachelor’s degree in electrical engineering, computer engineering, mechanical engineering, computer science, physics, or a related field, and at least four years of experience (or the academic equivalent) in the field of computer or machine vision. Ex. 1004 ¶ 42. The level of ordinary skill in the art is also reflected by the references themselves. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown.’”); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“On the full record now before us, we determine it is not necessary to construe any claim term expressly to resolve the parties’ dispute. Vivid Techs., Inc., 200 F.3d at 803 (“Only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review). D. Prior Art” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Additionally, by providing the declaration of Ms. Watters, Petitioner has taken further steps to provide testimony that Uzarski was catalogued, shelved, and indexed before the critical date, and made available such that persons of ordinary skill in the art, exercising reasonable diligence, could have located it. Id. at 1–2. Ms. Watters, a librarian with the University of Wisconsin-Madison since 1998, provides details regarding her professional background leading to her current position as Director of Wisconsin TechSearch within the University of Wisconsin-Madison. Ex. 1038, 1. She testifies that, based on her knowledge, Uzarski “was received by Wendt Library, University of Wisconsin-Madison Libraries on February 11, 1994.” Id. at 2. She further testifies that, based on the information in Uzarski, “it is clear that the microfiche was received by the library on or before February 11, 1994, catalogued and available to library patrons within a few days or at most 2 to 3 weeks after February 11, 1994.” Id. The declaration concludes with an affidavit that Ms. Watters is aware that false statements are punishable by fine or imprisonment or both. Id.; see 37 C.F.R. § 1.68; 28 U.S.C. § 1746. We have reviewed the testimony of Ms. Watters supporting Uzarski’s public accessibility as of the critical date, and find that Ms. Watters provides credible testimony regarding the receipt of Uzarski by the University of Wisconsin-Madison Library and the cataloging and availability of Uzarski. On this complete record, we are persuaded that the indicia on Uzarski and the support provided by the Watters declaration demonstrate sufficiently that Uzarski was publicly accessible as of the critical date.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner and its declarant provide ample reasons that one of ordinary skill in the art would have been motivated to employ Villar’s processor to use Uzarski’s method, and ample reasons that one of ordinary skill in the art also would have known to look to Haas to determine what was “well-known to one of ordinary skill in the art at the relevant time to determine the condition of railroad ties,” and to identify and use the particular regulations referenced in Uzarski. Pet. 30 (citing Ex. 1004 ¶ 58), 37–38 (citing Ex. 1004 ¶ 70); see also Reply 6–12; Ex. 1004 ¶¶ 70–71; Ex. 1038, 18–20. On this complete record, and for the reasons provided by Petitioner and discussed above, we determine that Petitioner provides adequate reasoning to combine the three references in the manner proposed in the Petition with a reasonable expectation of success.” slip op. at 33
Patent outcomesUS 9,441,956 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 9,441,956 - Boston Scientific Corporation v. Uab Research FoundationInstitution deniedPTAB · Sep 24, 2015 · IPR2015-00918 · APJ James A Worth · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–20 anticipated by KenKnight ’967, which was not prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine that the argument and evidence presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we do not institute an inter partes review for the challenged claims.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“We agree with Patent Owner, and we determine that the ’261 Application sets forth a device “configured for” “delivering antitachycardia pacing to said heart,” as recited by independent claims 1, 7, and 14. Petitioner has not persuaded us that the ’261 Application fails to disclose the claimed structure. Indeed, the ’261 Application discloses the same configuration of electrodes that deliver electrical impulses of the same energy and characteristics as the ’563 patent. Ex. 1002, 9:3–9, 12:30–32, Fig. 1. As noted by Patent Owner, the ’261 Application makes plain that it is directed to the treatment of “all forms of cardiac tachyarrythmias,” including “ventricular tachycardia.” See id. at 7:4–9.2” slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable
“We agree with Patent Owner, and we determine that the ’261 Application sets forth a device “configured for” “delivering antitachycardia pacing to said heart,” as recited by independent claims 1, 7, and 14. Petitioner has not persuaded us that the ’261 Application fails to disclose the claimed structure. Indeed, the ’261 Application discloses the same configuration of electrodes that deliver electrical impulses of the same energy and characteristics as the ’563 patent. Ex. 1002, 9:3–9, 12:30–32, Fig. 1. As noted by Patent Owner, the ’261 Application makes plain that it is directed to the treatment of “all forms of cardiac tachyarrythmias,” including “ventricular tachycardia.” See id. at 7:4–9.2” slip op. at 8
§ 102 anticipation§ 112 disclosurePatents in suitUS 6,266,563 - Headbox, LLC v. Infinite Imagineering, Inc.All claims unpatentablePTAB · May 22, 2015 · IPR2014-00365 · APJ Benjamin D M Wood · IPR · Final written decision
Claims 1–3, 5, 8–14, 16–19, 22, and 24–26 are unpatentable under § 103; claim 23 is indefinite under § 112, and its obviousness was not reached.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“headphone set in accordance with claim 1, where each of said speaker headphones includes a pair of stereo headphone driver units in order to increase the volume/audio level when said speaker headphones are not positioned on the user’s head.” Ex. 1001, 12:5–9 (emphasis added). Claim 23 additionally recites “wherein each of said headphone driver units includes a volume controlling means for regulating and presetting the volume level for said exterior speakers and said interior speakers.” Id. at 12:23–26 (emphasis added). Petitioner contends, and we agree, that “volume controlling means” is a means-plus-function claim term under 35 U.S.C. § 112, paragraph 6, and that the claimed function is regulating and presetting the volume level for the exterior speakers and the interior speakers. Pet. 11. Petitioner also contends that the Specification does not identify any structure that corresponds to this function. Id. “If the specification does not contain an adequate disclosure of the structure that corresponds to the claimed function, the patentee will have failed to particularly point out and distinctly claim the invention as required by the second paragraph of section 112, which renders the claim invalid for indefiniteness.” Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1382 (Fed. Cir. 2009) (internal quotation marks omitted). The Specification teaches that one embodiment of headphone set 10 includes driver unit 70 for interior speakers 42, 44, and driver unit 72 for exterior speakers 38, 40, with driver units 70, 72 including “volume controlling means” 71 and 73, respectively. Ex. 1001, 6:40–45, Fig. 2B.7 According to the Specification, the volume controlling means are for presetting a maximum volume to each of the interior and exterior speakers, presumably to prevent hearing damage caused by excessively loud audio. Id. at 6:57–7:2. But the Specification does not describe or depict the structure that the volume controlling means uses to preset the maximum volume. Instead, it merely describes their function and depicts each of them as a box in a block diagram. Id. This is not sufficient because it does not “cabin the scope of the functional language in the means[-plus-function] element.” ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 509, 518–19 (Fed. Cir. 2012) (holding that a “black box” in a flow chart only represents a function without specifying structure). Accordingly, we agree with Petitioner that the ’966 patent Specification does not describe structure corresponding to the function of presetting a maximum volume to the interior and exterior speakers, rendering claim 23 indefinite.” slip op. at 6
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteOther
“which renders the claim invalid for indefiniteness.” Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1382 (Fed. Cir. 2009) (internal quotation marks omitted). The Specification teaches that one embodiment of headphone set 10 includes driver unit 70 for interior speakers 42, 44, and driver unit 72 for exterior speakers 38, 40, with driver units 70, 72 including “volume controlling means” 71 and 73, respectively. Ex. 1001, 6:40–45, Fig. 2B.7 According to the Specification, the volume controlling means are for presetting a maximum volume to each of the interior and exterior speakers, presumably to prevent hearing damage caused by excessively loud audio. Id. at 6:57–7:2. But the Specification does not describe or depict the structure that the volume controlling means uses to preset the maximum volume. Instead, it merely describes their function and depicts each of them as a box in a block diagram. Id. This is not sufficient because it does not “cabin the scope of the functional language in the means[-plus-function] element.” ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 509, 518–19 (Fed. Cir. 2012) (holding that a “black box” in a flow chart only represents a function without specifying structure). Accordingly, we agree with Petitioner that the ’966 patent Specification does not describe structure corresponding to the function of presetting a maximum volume to the interior and exterior speakers, rendering claim 23 indefinite.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“speaker headphone (ear covers 20) on opposing ends of a headband—each speaker headphone comprising an exterior speaker (audio speaker 25) and an interior speaker (earphone speaker 27)—and a signal wire connecting an audio device output to the speaker headphones. Ex. 1003, 2:8–20, 23–44, 53–59, 3:24–32, Figs. 1, 2. Kuo also discloses a switch that allows a user to listen to either the interior speakers or exterior speakers, although it does not describe the claimed three-way switch that also allows a user to 8 See 37 C.F.R. § 42.23(a) (“Any material fact not specifically denied may be considered admitted.”). simultaneously listen to both interior and exterior speakers. Id. at 2:32–44, 3:27–29. We find, however, that Awaba discloses a three-way switch (mode switch 28) that permits a user to select between the three claimed listening modes. Ex. 1004, 2:5–12, 27–28, 4:30–36, Fig. 1. Further, a skilled artisan9 would have considered Awaba’s three-way switch to be an obvious substitute for Kuo’s two-way switch because both are used for essentially the same purpose: to select between a headphone’s internal and external speakers on similar speaker-equipped headphones. The skilled artisan would have been motivated to make the substitution because Awaba’s threeway switch adds the additional functionality of being able to play both sets of speakers at the same time.” slip op. at 9
- Obviousness (§103) › KSR rationalesUnpatentable
“claim 1. We find that the combination of Kuo and Awaba teaches the additional limitations recited in these claims. Specifically, Kuo discloses the input jack, amplifier member, power source, headphone shape and audio-device connection of, respectively, claims 8–10, 12, and 16. Ex. 1003, 2:21– 31, 37–39, 47–59, 3:4–32, Figs. 1, 2, 5–7. Kuo’s mounting of ear covers 20 at the joint ends 11 of headband 10 corresponds to the requirements of claim 5. Id. at 2:12–18, Fig. 2. Further, Awaba discloses the three-way switch of claims 2 and 11 and the electrical connections of claim 11 (Ex. 1004, 2:24– 28, 4:25–36, Fig. 1); Awaba’s transmission of mono signals corresponds to 9 We find that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of skill in the art). the monaural system of claim 24 (id. at 4:26–29); and Awaba’s socket 24 corresponds to claim 26’s pocket (id. at 4:10–17). Adding these features to Kuo’s headphones would have constituted use of known techniques to improve similar devices (speaker-equipped headphones) in the same way. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) (holding that “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”).” slip op. at 10
Patent outcomesUS 8,085,966 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 8,085,966 - Munchkin, Inc. / Toys “r” US, Inc. v. Luv N’ Care, Ltd.All claims unpatentablePTAB · Apr 21, 2014 · IPR2013-00072 · APJ Michael J Fitzpatrick · IPR · Final written decision
The sole claim is unpatentable as obvious over Hakim ’225 and Hakim ’604; the motion to amend is denied because it would enlarge claim scope.
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“The test for sufficiency of the written description, which is the same for either a design or a utility patent, has been expressed as “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Id. (quoting Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)). In the context of design patents, the drawings provide the written description of the invention. Thus, when an issue of priority arises under § 120 in the context of design patent prosecution, one looks to the drawings of the earlier application for disclosure of the subject matter claimed in the later application. Owens, 710 F.3d at 1366 (citations omitted).” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“likelihood that the claim of the ’465 patent would have been obvious over each of Hakim ’225 and Hakim ’604. Dec. on Pet. 23. In response, Patent Owner does not argue that the claim is patentably distinct from those references. PO Resp. 6-7; Tr. 31:10-17. Rather, Patent Owner argues that the references are not prior art. PO Resp. 6-7; Tr. 31:10-17.” slip op. at 5
- ScopeMotion to amend, deniedDenied
“Owner relies on this distinction, between infringement of design patents and that of utility patents, to argue that the proposed amended claim is not broader than the issued claim because, to “an ordinary observer,” the designs are “substantially the same.” PO Reply 4 (emphasis added). However, Patent Owner does not direct us to, and we are not aware of, any authority that has applied the “ordinary observer” test—first enunciated as a test for infringement in Gorham Manufacturing Co. v. White, 81 U.S. 511 (1871) and adopted as the sole test for design patent infringement in Egyptian Goddess, 543 F.3d at 678—to compare the scope of two claims. The scope of the issued claim and the proposed amended claim are defined by the respective drawings. See id. at 679 (design patents typically are claimed as shown in the drawings). Those drawings differ with respect to the spout tip and the vent. Specifically, the proposed amended claim is broader than the issued claim because it is broader with respect to racetrackshaped spout tips and raised rim vents, even though it may be narrower with respect to egg-shaped spout tips and vents without raised rims. See In re Rogoff, 261 F.2d 601, 603 (CCPA 1958) (“[A] claim is broadened if it is broader in any respect than the original claim, even though it may be narrowed in other respects.”). In other words, a drinking cup, having the racetrack-shaped spout tip and raised rim vent of the proposed amended claim, could infringe the proposed amended claim based on its overall design, yet not infringe the issued claim. See Thermalloy, Inc. v. Aavid Eng’g, Inc., 121 F.3d 691, 692 (Fed. Cir. 1997) (“A new claim enlarges if it includes within its scope any subject matter that would not have infringed the original patent.”). Therefore, the proposed amended claim would enlarge the claimed subject matter in violation of 35 U.S.C. § 316(d)(3) and 37 C.F.R. § 42.121(a)(2)(ii).” slip op. at 14
Patent outcomesUS D617,465 unpatentable§ 103 obviousness§ 112 disclosure
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.