- PTAB · Sep 23, 2022 · PGR2022-00030 · APJ James J Mayberry · PGR · Institution
Instituted PGR on claims 1–20 after finding it more likely than not that at least one challenged claim is unpatentable, including because Bucco anticipates claims 1, 2, 4–16, and 18–20.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We may not institute a post-grant review “unless . . . the information presented in the petition filed under section 321, 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) (2011). Upon consideration of the arguments and evidence, we determine Petitioner has demonstrated that it is more likely than not that at least one of the Challenged Claims is unpatentable. Accordingly, we institute a post-grant review of the Challenged Claims of the ’486 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For the purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill in the art. We determine that Petitioner’s definition is more consistent with the prior art of record, and the skill reflected in the Specification of the ’486 patent, based on our review of the limited record. Specifically, we preliminarily find that the field of “consumer products,” as proposed by Patent Owner, is too broad, based on our review of the limited record before us, including the prior art of record, which is directed to razors and personal grooming devices. See Exs. 1003; 1005–1007; 1010; 1011; 2003–2007; 2010–2015. We note, however, that our conclusions in this Decision would not change if we applied Patent Owner’s definition of the level of ordinary skill.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Regardless of the parties’ proposed constructions, the parties do not dispute that the pivot member placement terms encompass embodiments beyond the embodiment illustrated in Figure 1 of the ’486 patent. See, e.g., Pet. 30–31 (“All . . . claims [other than claims 3 and 17] are necessarily broad enough to encompass a handle that includes the two opposed legs.”); Prelim. Resp. 49 (depicting embodiment where the two opposing legs are on a clevis attached to the handle). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Accordingly, for the purposes of this Decision, we construe the pivot member placement terms to encompass embodiments beyond the embodiment illustrated in Figure 1 of the ’486 patent. We also determine, on the current record, that we need not construe any other claim term to resolve the parties’ dispute at this stage of the proceeding. See Realtime Data, LLC, 912 F.3d at 1375.” slip op. at 16
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable
“Like in SunModo, the grandparent application expressly discloses the opposed legs attached to the cartridge and the pivot member attached to the arm of the handle only. The grandparent application does not describe the opposed legs as part of the handle. Nor does the application state that the position of the opposed legs and pivot member are flexible, such that they could be reversed. On the limited record before us, the lack of any disclosure in support of Patent Owner’s reversal of parts embodiment is fatal to Patent Owner’s position. Cf. SunModo, 890 F.3d at 1052 (“The lack of any disclosure of an assembly with a washer below the flashing, or statement on the flexibility of the position of the washer, is fatal to D Three’s argument.”). We have considered Patent Owner’s arguments and determine, on the current record, that they do not demonstrate a deficiency in Petitioner’s position. First, Patent Owner’s argument that reversal of parts is generally common practice within the level of ordinary skill goes to the obviousness of rearranging parts to reach what is now claimed, rather than the adequacy of the written description of what is now claimed. Cf. Lockwood, 107 F.3d at 1572: The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification. Rather, a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought. . . . One shows that one is “in possession” of the invention by describing the invention, with all its claimed limitations, not that which makes it obvious. Tellingly, Patent Owner relies, at least in part, on MPEP Section 2144.04. But this section is part of the MPEP directed to obviousness, not written description. See MPEP § 2144 (“Supporting a Rejection Under 35 U.S.C. 103”). Patent Owner’s reliance on the MPEP’s examining guidelines for written description is also unavailing. See Prelim. Resp. 50–51 (citing MPEP § 2163(II)(A)(3)(a), and quoting “If a skilled artisan would have understood the inventor to be in possession of the claimed invention at the time of filing, even if every nuance of the claims is not explicitly described in the specification, then the adequate description requirement is met.”). We preliminarily find that reversing the locations of the pivot member and opposed legs from those locations disclosed in the only embodiment described in detail in the specification represents more than a “nuance” of the claims. Instead, it represents a departure from the disclosed embodiment of Figure 1, a departure with no support in the actual written description in the grandparent application.” slip op. at 24
Claim construction§ 102 anticipation§ 112 disclosureDiscretionary denialPatents in suitUS 11,235,486 - PTAB · Apr 8, 2022 · IPR2022-00017 · APJ Hubert C Lorin · IPR · Institution
The Board instituted inter partes review of claims 1–5 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one ground.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“The Board uses a two-part framework for evaluating arguments under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). “[T]he Becton, Dickinson factors provide useful insight into how to apply the framework under 35 U.S.C. § 325(d).” Id. at 9 (footnote omitted). The non-exclusive Becton, Dickinson factors are: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments.” slip op. at 9
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends: A POSA in February of 2005 would have at least a bachelor’s degree in biomechanics or engineering (or equivalent) and about five years or more industry experience or equivalent experience in designing cardiovascular exercise equipment (such as treadmills, bicycles, steppers, ellipticals) or in a similar field. A POSA could substitute directly relevant additional education for experience, e.g., substituting an advanced degree relating to the design of cardiovascular exercise equipment (such as treadmills, bicycles, steppers, ellipticals) or biomechanics (or equivalent), for industry experience in a related field, and vice versa, substituting additional industry experience for a formal degree in a relevant field. Sargeant-328 ¶¶52-53. Pet. 4. Patent Owner states that “the Petition essentially repeats the same proposed standard [as in the District Court Action]. As such, there appears to be no significant dispute over the level of skill in the art possessed by a POSA.” Prelim. Resp. 11. Petitioner’s proposed definition of a person of ordinary skill in the art appears reasonable, and we adopt that definition for our analysis in this decision.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“When read in the context of the entirety of the first paragraph, the phrase “direct drive or fixed gear configuration” suggests that the two configurations are alternatives but it does not necessarily indicate that they equate to each other. When read in the context of the entirety of the second paragraph, the phrase “direct drive (fixed gear)” also does not necessarily suggest that they equate to each other. The entire phrase is “direct drive (fixed gear) and/or non direct drive e.g., freewheeling configuration.” Ex. 1002, 3:13–14; cited at Pet. Prelim. Reply 7. In other words, “direct drive (fixed gear)” configurations are not non–direct drive configurations, such as freewheeling configurations. Other than indicating that they are not non–direct drive configurations, there is insufficient additional indication that “direct drive” and fixed gear mechanisms equate to each other. Accordingly, the evidence at this stage more strongly supports Patent Owner’s argument that the ’328 patent does not disclose that “direct drive” configurations equate to fixed gear configurations. Given no other evidence at this stage to show that one of ordinary skill in the art would understand the ’328 patent’s disclosure of “direct drive (fixed gear)” (Ex. 1002, 3:13) and “a direct drive or fixed gear configuration” (id. at 2:10) to mean that 4 Warner (Ex. 1009). “direct drive” equates to fixed gear, Petitioner has not sufficiently shown that the ’328 patent equates “direct drive” to fixed gear configurations.” slip op. at 30
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION For the foregoing reasons, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of claims 1–5 of the ’328 patent. Accordingly, we grant the Petition and institute an inter partes review of the ’328 patent. Because a decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition,” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 & n.2 (Fed. Cir. 2018) (citing SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018) and corresponding USPTO Guidance, https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial (Apr. 26, 2018)), and because we have determined that at least one ground set forth in the Petition satisfies the threshold for institution, trial is instituted on the proposed grounds based on Rice, Warner, Sotokoshi, and Baudhuin–429. IV. ORDER It is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review of claims 1–5 of the ’328 patent is instituted with respect to all grounds set forth in the Petition; and” slip op. at 70
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,137,328 - PTAB · Apr 8, 2022 · IPR2022-00016 · APJ Hubert C Lorin · IPR · Institution
The Board instituted IPR on claims 1–13, 16, and 17 on all petitioned grounds after finding a reasonable likelihood of success on at least one claim; claims 14 and 15 were disclaimed.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). “[T]he Becton, Dickinson factors provide useful insight into how to apply the framework under 35 U.S.C. § 325(d).” Id. at 9 (footnote omitted). The non-exclusive Becton, Dickinson factors are: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments.” slip op. at 12
- Adverse judgmentAdverse judgmentOther
“Based on our review of the Disclaimer and Office public records, we conclude that a disclaimer of claims 14 and 15 of the ’240 patent under 35 U.S.C. § 253(a) has been recorded in the Office as of February 22, 2022. Accordingly, claims 14 and 15 have been disclaimed under 35 U.S.C. § 253(a) in compliance with 37 C.F.R. § 1.321(a). As a result, no inter partes review shall be instituted as to claims 14 and 15. 37 C.F.R. § 42.107(e); Intuitive Surgical, Inc. v. Ethicon LLC, IPR2018-01248, Paper 7 at 2 n.1, 9–10 (PTAB Feb. 7, 2019) (discussing interplay of a disclaimed claim, Federal Circuit precedent, and our governing statutes and rules); Daikin Indus. Ltd. v. The Chemours Co., IPR2018-00993, Paper 12 at 5–7 (PTAB Nov. 13, 2018) (noting that adverse judgment following partial disclaimer was not appropriate at least because the nondisclaimed claims “ha[d] yet to be ‘decided.’”); cf. General Electric Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (declining to institute inter partes review when all challenged claims were disclaimed under 35 U.S.C. § 253(a)). Accordingly, we treat claims 14 and 15 as having never been part of” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the foregoing reasons, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of claims 1–13, 16 and 17 of the ’240 patent. Accordingly, we grant the Petition and institute an inter partes review of the ’240 patent. Because a decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition,” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 & n.2 (Fed. Cir. 2018) (citing SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018) and corresponding USPTO Guidance, https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial (Apr. 26, 2018)), and because we have determined that at least one ground set forth in the Petition satisfies the threshold for institution, trial is instituted on the proposed grounds based on Rice, Warner, Sotokoshi, and Baudhuin–429. IV. ORDER It is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review of claims 1–13, 16 and 17 of the ’240 patent is instituted with respect to all grounds set forth in the Petition; and” slip op. at 78
- Skill levelSkill level petitioner adoptedOther
“A POSA in February of 2005 would have at least a bachelor’s degree in biomechanics or engineering (or equivalent) and about five years or more industry experience or equivalent experience in designing cardiovascular exercise equipment (such as treadmills, bicycles, steppers, ellipticals) or in a similar field. A POSA could substitute directly relevant additional education for experience, e.g., substituting an advanced degree relating to the design of cardiovascular exercise. Pet. 3–4 (citing Sargeant–240 Decl. ¶¶ 50–54). Patent Owner states that “the Petition essentially repeats the same proposed standard [as in the District Court Action]. As such, there appears to be no significant dispute over the level of skill in the art possessed by a POSA.” Prelim. Resp. 14. Petitioner’s proposed definition of a person of ordinary skill in the art appears reasonable, and we adopt that definition for our analysis in this decision.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,694,240
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.