- Fluidmaster, Inc. v. Danco, Inc.Some claims unpatentablePTAB · Mar 5, 2026 · IPR2024-00634 · APJ Meredith C Petravick · IPR · Final written decision
Claims 1, 3, 8–13, 15, 16, and 19–24 are unpatentable over Brown and Ho, with claims 16 and 19 also relying on the Quick Connection Art; the remaining challenged claims were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner proposes that: A [person of ordinary skill in the art (“POSITA”)] in the field to which the ’105 Patent is directed would have had at least a Bachelor of Science degree in mechanical engineering or a related field or, as a substitute, at least two years of work or” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“of “integrally molded with” as “molded together as a single structure.” Paper 21, 15.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Patent Owner responds that: a POSITA would not have been motivated to make the proposed modification, nor does the Petition include any analysis regarding why a POSITA would be motivated to move from a vertical extended portion to a radial extended portion. Indeed, a radial extended portion is directly counter to the stated goals of Brown (e.g., reducing noise caused by turbulence), at least insofar as it introduces another sudden directional change into the fluid flow system. PO Resp. 58–59 (citing Ex. 2013 ¶ 242).” slip op. at 32
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“Patent Owner argues that the ’105 patent claims were “fully supported as of the filing date of at least the ’606 Application . . . March 11, 2004” because the ’606 Application discloses regulating water flow and a POSITA would know that appropriate devices for regulating water flow includes nonadjustable waterflow restrictors. PO Resp. 63–65; PO Sur-reply 26–29. Patent Owner’s argument is persuasive. The ’606 Application discloses: [W]hen the toilet fill valve 100 is open and water flows from the water inlet 103 to the water outlets 106 and into a toilet tank, an amount of water is also supplied to the bowl fill valve inlet 113 that flows through the bowl fill valve 109 and out the bowl fill valve outlet 116. By virtue of the manual setting of handle 119 of the bowl fill valve 109, the flow of water through the bowl fill valve 109 is regulated. In this manner, the flow of water is regulated so that enough water flows out of the bowl fill valve 109 to fill a toilet bowl without wasting any water down a drain. seen from the passage above, the ’606 Application discloses regulating an amount of water supplied to a toilet bowl using a valve (i.e., a water flow regulator). Ex. 2013 ¶ 288. Further, the ’606 Application states: The bowl fill valve 109 may be, for example, a ball valve, a gate valve, a globe valve, a plug valve, a diaphragm valve, a butterfly valve, a needle valve, a sliding gate, a quick turn valve, a knife valve or any other appropriate type of valve as can be appreciated by those with ordinary skill in the art.” slip op. at 42
Patent outcomesUS 9,103,105 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 9,103,105 - Fluidmaster, Inc. v. Danco, Inc.Some claims unpatentablePTAB · Dec 15, 2025 · IPR2024-00633 · APJ Meredith C Petravick · IPR · Final written decision
Claims 1, 7–15, 19, and 20 are unpatentable over Brown and Ho; claims 2–6 and 16–18 were not shown unpatentable on the asserted grounds.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Brown’s adapter tube 23 (i.e., the extended portion) does not extend radially from a longitudinal axis of valve assembly 13 (i.e., the toilet fill valve). Ex. 1021, Fig. 1. Mr. Jobin testifies that a POSITA would not be motivated to move adapter tube 23 from a vertical position to a radial position because “a radial extended portion is directly counter to the stated goals of Brown (e.g., reducing noise caused by turbulence), at least insofar system.” Ex. 2013 ¶ 251; see Ex. 1021, 1:9–62. Patent Owner’s argument is persuasive. Petitioner’s analysis and Dr. Cameron’s testimony is conclusory and does not sufficiently explain why a POSITA would be motivated to make the proposed modification to Brown. For example, Petitioner does not sufficiently explain how such a modification would result in a more compact toilet fill valve system that could be adapted to fit in more toilet tank designs. Further, neither Petitioner nor Dr. Cameron sufficiently address Mr. Jobin’s testimony regarding Brown’s desire for a quieter toilet. See Pet. Reply 23; Ex. 1036 ¶ 84. Petitioner fails to meet its burden to show by a preponderance of the evidence that claim 2 is unpatentable over Brown and Ho.” slip op. at 35
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“description is an objective inquiry into the four corners of the specification from the perspective of a POSA. Using this test, the invention must be described in a manner sufficient to demonstrate that the inventor actually invented the claimed invention. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). “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.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Written description is a question of fact judged as of the relevant filing date. Falko–Gunter Falkner v. Inglis, 448 F.3d 1357, 1363 (Fed. Cir. 2006). An ipsis verbis disclosure, however, is not necessary to satisfy the written description requirement. Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). The disclosure need only reasonably convey to a POSA that the inventor had possession of the subject matter in question, even if every nuance of the claims is not explicitly described in the specification. Id.; see Ariad, 598 F.3d at 1351. Patent Owner argues that the ’993 patent claims were “fully supported as of the filing date of at least the ’606 Application . . . March 11, 2004” because the ’606 Application discloses regulating water flow and a POSITA would know that appropriate devices for regulating water flow includes nonadjustable waterflow restrictors. PO Resp. 68; PO Sur-reply 28–30. Patent Owner’s argument is persuasive. The ’606 Application discloses: [W]hen the toilet fill valve 100 is open and water flows from the water inlet 103 to the water outlets 106 and into a toilet tank, an amount of water is also supplied to the bowl fill valve inlet 113 that flows through the bowl fill valve 109 and out the bowl fill valve outlet 116. By virtue of the manual setting of handle 119 valve 109 is regulated. In this manner, the flow of water is regulated so that enough water flows out of the bowl fill valve 109 to fill a toilet bowl without wasting any water down a drain. Ex. 1012, 47, ¶ 8 (emphasis added); see also Ex. 1001, 2:28–39. As can be seen from the passage above, the ’606 Application discloses regulating an amount of water supplied to a toilet bowl using a valve (i.e., a water flow regulator). Ex. 2013 ¶ 288.” slip op. at 48
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable
“1. Analysis of Claims 1–18 Schuster is available as prior art if the ’993 patent is only entitled to its January 27, 2014, filing date and not entitled to claim priority to earlier filing dates of the parent applications. On its face, the ’993 patent claims priority to a number of earlier parent applications, including Application No. 12/786,904 (the ’904 Application) filed May 25, 2010, and the Application code 63. Petitioner contends that the ’993 patent is not entitled to claim priority to the filing date of the earlier parent applications, and, thus, Schuster, a parent application of the ’993 patent, is available as prior art.15 Pet. 91–92. Petitioner alleges that the earlier parent applications, specifically Application No. 12/786,904 (the ’904 Application), do not provide written description support for the ’993 patent’s claim term “water flow regulator.” According to Petitioner, “water flow regulator” encompasses both adjustable devices for restricting the flow of water (i.e., valves) and fixed devices for restricting the flow of water (i.e., restrictors). Pet. 15. Petitioner contends that the ’904 Application does not provide support for water flow restrictors and, thus, does not provide support for the broader claim term water flow regulators. Id. at 14–15, 91–92. Petitioner argues that only adjustable water flow devices (i.e., valves) are supported by the ’904 Application. Id. Petitioner, thus, asserts that earliest effective filing date of the ’993 patent’s claims is the filing date of its application, January 27, 2014. Id. at 92. To be entitled to claim the benefit of an earlier filing date under 35 U.S.C. § 120 each application in the priority chain must comply with the written description requirement of 35 U.S.C. § 112(a). See Hollmer v. 14 The parties do not dispute that the ’993 patent and the earlier parent applications, including the ’904 Application and the ’606 Application, have the same pertinent portions of their specifications. See PO Resp. 71, n.16; Ex. 1004 ¶ 324. 15 Schuster issued on January 31, 2012, from Application No. 12/786,904, filed on May 25, 2010. Ex. 1029, code (21), (22), (45). Schuster, thus, issued more than one year prior to January 27, 2014.” slip op. at 46
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“2. Analysis of Claims 19 and 20 Claim 19 depends from claim 14 and additionally recites, “wherein the waterflow regulator comprises an adjustable water flow regulator that is configured to adjust the flow rate of the second portion of the water based at least in part on a setting of the adjustable water flow regulator.” Ex. 1001, 12:16–20. Claim 20 depends from claim 14 and recites the same additional limitation. Id. at 12:21–24. Claims 19 and 20, thus, require the water flow regulator to be an adjustable water flow regulator. Petitioner indicates that the earlier parent applications provide written description support for an adjustable water flow regulator. Pet. 91 (“[T]he ’904 application specification makes it clear that the adjustability of the bowl fill valve is a desirable and essential feature of the invention”); PO Surreply 28. Accordingly, Petitioner fails to meet its burden to show, by a preponderance of the evidence, that claims 19 and 20 are unpatentable over Schuster.” slip op. at 50
Patent outcomesUS 9,139,993 mixed§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 9,139,993 - PTAB · Dec 17, 2021 · PGR2021-00093 · APJ Meredith C Petravick · PGR · Institution
The Board instituted PGR on claims 1–25 on all petition grounds after finding the § 101 challenge to claim 1 met the institution threshold.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Fintiv sets forth the factors that we weigh in determining whether to exercise our discretion to deny institution of the post-grant patent review proceeding here under 35 U.S.C. § 324(a). See Fintiv, Paper 11, 5–6. These factors are: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. at 6. “[T]he Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Because the claims at issue here, in particular claim 1, differ from the March 2015 amended claims of the ’859 patent and the August 2014 amended claims of the ’296 patent (see, e.g., Ex. 1001, 46:59–47:34), we are not persuaded that the cited prosecution history equally applies to the claims here. In particular, we note that claim 1, which we discuss in the analysis below, does not recite a first transceiver corresponding to a short-range communication mode and a second transceiver corresponding to a long-range communication mode, and does not specify whether a first or second transceiver perform certain actions recited in the claim. Id. As Patent Owner points out (Prelim. Resp. 19), claim 1 of the ’614 patent more but claim 1 does not specify whether it is long or short range and merely recites it being used to establish a connection for the exchange of information between a mobile device and a payment accepting unit in some of the claimed steps. Id. Thus, considering Becton, Dickinson factors (a) and (d), we are not persuaded that the same or substantially the same arguments concerning § 101 were previously presented to the Office. Because we determine that the same or substantially the same arguments with respect to § 101 were not previously presented to the Office, we need not address part two of the Advanced Bionics framework with respect to those arguments.” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A [person having ordinary skill in the art (“POSITA”)] would have had an education background of, or practical experience providing an equivalent to, a Bachelor of Science in Electrical Engineering, Computer Science, or a related/equivalent field and at least 3 years of academic or industry experience in electronic payment systems. Pet. 16 (citing Ex. 1003 ¶¶ 5–6). Patent Owner does not dispute Petitioner’s contention in its Preliminary Response. See generally Prelim. Resp. Based on the record before us, we adopt Petitioner’s asserted level of ordinary skill to determine whether it is more likely than not that at least one of the claims challenged in the Petition is unpatentable. This level of skill in the art is consistent with the disclosure of the ’614 patent and the prior art of record. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 22
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionInstituted
“Ex. 1001, 46:61–47:34. Based on the current record, we are persuaded that the limitations above recite the concept of identifying a merchant and making a purchase from the merchant. In particular, claim 1 recites steps for identifying payment accepting units (i.e., a merchant) — limitations 1.2– 1.7.1. Claim 1 also recites steps for conducting the purchase —limitations 1.7.2–1.11. Based on the current record, we find that identifying a merchant and making a purchase from the merchant is a commercial interaction, a sales activity. It falls within the enumerated “[c]ertain methods of organizing human activity” grouping of abstract ideas set forth in MPEP § 2106.04(a)(2).” slip op. at 28
Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Mayo · Bilski · Berkheimer · Phillips · NautilusPatents in suitUS 10,891,614 - Kiosoft Technologies, LLC / Techtrex, Inc. v. Payrange Inc.Institution deniedPTAB · Dec 16, 2021 · PGR2021-00084 · APJ Meredith C Petravick · PGR · Institution
The Board denied institution because Petitioner did not show that any of claims 1–20 was more likely than not unpatentable on the asserted § 112, § 102, or § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“instituted 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.”1 After considering the Petition, the Preliminary Response, Reply, Sur- reply and the evidence of record, we determine that Petitioner fails to demonstrate that it is more likely than not that at least one of the claims challenged in the Petition is unpatentable. Accordingly, we do not institute a post-grant review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“We are not persuaded by Petitioner’s arguments because Petitioner’s proposed construction improperly attempts to read a particular embodiment described in the ’608 patent into the claims. It is not proper to read limitations from the ’608 patent into the claims: Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). “[A]lthough the specification often describes very specific embodiments of the invention, [the Federal Circuit has] repeatedly warned against confining the claims to those embodiments.” Phillips, 415 F.3d at 1323. As Mr. Smith points out, the ’608 patent does describe offline- payment operated machine 1500 as an electro-mechanical machine capable of accepting currency (e.g., coins), which is not connected to any networks (e.g., telephone, cellular, or Wi-Fi). Ex. 1005 ¶ 84 (citing Ex. 1002, 39:39– 45). But, the ’608 patent describes offline-payment operated machine 1500 as merely one example of an offline-payment operated machine in some implementations. The ’608 patent states: FIG. 28A illustrates a block diagram of an offline-payment operated machine 1500 in accordance with some implementations. For example, the offline-payment operated machine 1500 (e.g., a form of the machine 120) is an electro-mechanical machine capable of accepting currency (e.g., coins), which is not connected to any networks (e.g., telephone, cellular, or Wi-Fi). For example, the offline-payment operated machine 1500 is a washer or dryer at a laundromat, a parking meter, a car wash payment kiosk, or other offline-payment operated machine that dispenses goods and/or services. Ex. 1002, 39:38–48 (emphases added). The ’608 patent emphasizes that offline-payment operated machine 1500 is merely an example. Id. at 39:52– 56 (“The components of the offline-payment operated machine 1500 in FIG. 28A are examples and one of skill in the art will appreciate that various” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A [person having ordinary skill in the art (“POSITA”)], as of the date of the alleged invention, would have had an education background of, or practical experience providing an equivalent to, a Bachelor of Science in Electrical Engineering, Computer Science, Information Technology, or a related/equivalent field and at least three years of work experience in electronic payment systems, vending machine technologies, or telecommunication solutions. Pet. 29 (citing Ex. 1005 ¶ 52). Patent Owner does not dispute Petitioner’s contention in its Preliminary Response. See generally Prelim. Resp. Based on the record before us, we adopt Petitioner’s asserted level of ordinary skill to determine whether it is more likely than not that at least one of the claims challenged in the Petition is unpatentable. This level of skill in the art is consistent with the disclosure of the ’608 patent and the prior art of record. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 7
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable
“Under 35 U.S.C. § 112(a), “[t]he specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same . . . .” To satisfy the written description requirement, the disclosure must reasonably convey to skilled artisans that the patentee possessed the claimed invention as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The requirement under § 112 does not demand that the specification recite the claimed invention verbatim. Id. at 1352 (citations omitted). The “claimed subject matter need not be described in haec verba in the specification in order for that specification to satisfy the description requirement.” In re Smith, 481 F.2d 910, 914 (CCPA 1973). “Original claims are part of the original specification and in many cases will satisfy the written description requirement.” Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275, 1297 (Fed. Cir. 2017). We agree with Patent Owner. Petitioner, itself, indicates that the specification of the ’608 patent discloses an interface module counting the electrical pulses generated by a coin receiving switch. The Petition states: “Specifically, the objective inquiry reveals that it is only the ‘first interface module’ that is mentioned as counting one or more electrical pulses generated by the coin receiving switch.” Pet. 32; see also Ex. 1005 ¶ 125 (corresponding testimony of Mr. Smith). In this regard, the ’608 patent states: In FIG. 28A, the first interface module 1522 is configured to sample payment acceptance signals from the microswitch 1502 (e.g., a coin receiving switch) via lead 1532 of the offline-payment operated machine 1500. For example, the payment acceptance signals are indicative of a coin being received by the microswitch 1502 which depress lever 1504. Ex. 1002, 40:35–40. The ’608 patent also describes FIG. 28B as illustrating signals sampled by the first interface module 1522, “[f]or example, the preset sequence of payment acceptance signals indicative of the preset number of coins include pulses (i.e., payment acceptance signals) 1552, 1554, 1556, and 1558.” Id. at 40:50–58; see also id. at 41:59–42:4 (“payment acceptance signals are indicative of a preset number of coins received by the coin receiving switch”); 42:49–55 (describing identifying a count of pulses). The ’608 patent further states: “[T]he terms used for labels (e.g., ‘first,’ ‘second,’ and ‘third’) are meant solely for purposes of designation and not for order or limitation.” Id. at 46:11–14. Claim 19, as originally filed, recited limitation (b), with the coin counting interface module being labeled as the second interface module. Ex. 1003, 283. Given the originally filed claim 19 and the above disclosures of the ’608 patent, Petitioner does not persuade us that the ’608 patent does not reasonably convey to skilled artisans that the patentee did not possess the claimed invention as of the filing date. Petitioner does not show sufficiently that claims 19–20 are more likely than not unpatentable under 35 U.S.C. § 112(a) for lack of written description.” slip op. at 15
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · NautilusPatents in suitUS 10,891,608 - DISH Network Corporation / DISH Network L.L.C. v. Customedia Technologies, L.L.C.All claims unpatentablePTAB · Jul 25, 2018 · CBM2017-00032 · APJ Meredith C Petravick · CBM · Final written decision
Claims 1–4, 6–7, 16–19, 23–24, 26–28, 32–36, and 41 are unpatentable under § 101; the petitioner did not show claims 17, 18, 23, 24, and 28 unpatentable under § 112.
RulingsFinal written decision- BurdenOther
“Considering each claim limitation, as well as each explicit citation to the specification expressly set forth in the Petition, we are persuaded that Petitioner has met its burden of showing, via analysis and evidence explicitly set forth on pages 6–7 of the Petition, that independent claim 1, as a whole, does not recite a technological feature that is novel or unobvious.” slip op. at 22
- Adverse judgmentOther
“Response (Paper 24, “PO Resp.”) and disclaimed claims 5, 25, 39, and 43 (Ex. 2006). Petitioner filed a Reply to the Patent Owner’s Response (Paper 38, “Pet. Reply”). Patent Owner filed a Sur-Reply (Paper 40, “PO Sur”), and Petitioner filed a Response to the Sur-Reply (Paper 41, “Pet. Sur”).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“II. ANALYSIS A. Claim Construction Petitioner and Patent Owner dispute the construction of certain claim terms. Pet. 23–28; PO Resp. 34–46. We apply the constructions of those terms set forth in Paper 49 in this decision.” slip op. at 7
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“We agree. The preambles of independent claims 1, 19, and 33 expressly state as much. In particular, the preamble of claims 1 and 33 provide: “A system for providing targeted advertising to a multimedia content end user” (claim 1) or “a plurality of multimedia content end users” (claim 33). Ex. 1003, 46:13–14, 49:59–60. Likewise, claim 19’s preamble refers to “[a] device for providing targeted advertising to an end user.” Id. at 48:20–21. Taking claim 1 as a representative example, the remainder of the claim recites certain tangible components, namely a “storage device” and specifically, an “addressable and reserved storage space”; a “processor”; and “software implemented by” the processor. Id. at 46:13–28. The claim further requires the following functionalities: the processor “reserv[ing]” the storage space; the processor “select[ing] particular advertising data suitable for targeting to at least one end user based upon predefined criteria data”; the storage space “storing digital advertising data” and specifically, the “particular advertising data”; and the “particular advertising data” being “accessible to” the user. Id. Thus, we are persuaded that claim 1, taken as a whole, is focused on the concept of providing targeted advertising to a user. Further, the claims merely invoke computers as a tool to implement the concept of targeted advertising, and are not directed to any improvement in computer functionality. See Pet. 34; Ex. 1008 ¶¶ 944–945. The claims recite generic components and functionality. For example, in claim 1, the required components, outlined above—a storage device and specifically, a storage space, a processor, and software— are conventional. The recited functionalities—reserving the storage space for advertising data, selecting advertising data targeted to a user, storing that data, and making that data accessible to the user—are likewise basic and routine. As Petitioner points out, the specification expressly acknowledges that some of the tangible components of the recited system were known. See Pet. 7–8, 33–34, 40–75; Ex. 1008 ¶ 949. For instance, the specification refers to storage device 14 as “any medium known in the art for storing electronic data” and similarly, “any storage device for audio/video information known in the art.” Ex. 1003, 13:22–28, 15:1–5, 24:66–25:7; see id. at [57], 5:3–6, 21:42–22:2. The testimony of Petitioner’s declarant, Dr. Negus, also persuade us that each recited component and functionality was generic, conventional, and known. Ex. 1008 ¶¶ 945, 949–954; see id. ¶¶ 955–987.” slip op. at 26
Patent outcomesUS 9,053,494 unpatentableClaim construction§ 101 eligibility§ 112 disclosurecites Mayo · EnfishPatents in suitUS 9,053,494 - Minerva Surgical, Inc. v. Hologic, Inc.All claims unpatentablePTAB · May 8, 2018 · PGR2017-00002 · APJ Meredith C Petravick · PGR · Final written decision
Claims 1–19 are unpatentable under § 112(a) for lack of written description; Petitioner did not prove lack of enablement.
RulingsFinal written decision- BurdenUnpatentable
“Written Description and the ’506 Application The test for written description is an objective inquiry into the four corners of the specification from the perspective of a POSA. Using this test, the invention must be described in a manner sufficient to demonstrate that the inventor actually invented the claimed invention. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). “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.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Written description is a question of fact judged as of the relevant filing date. Falko–Gunter Falkner v. Inglis, 448 F.3d 1357, 1363 (Fed. Cir. 2006). An ipsis verbis disclosure, however, is not necessary to satisfy the written description requirement. Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). The disclosure need only reasonably convey to a POSA that the inventor had possession of the subject matter in question, even if every nuance of the claims is not explicitly described in the specification. Id.; see Ariad, 598 F.3d at 1351.” slip op. at 23
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
“Written Description and the ’506 Application The test for written description is an objective inquiry into the four corners of the specification from the perspective of a POSA. Using this test, the invention must be described in a manner sufficient to demonstrate that the inventor actually invented the claimed invention. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). “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.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Written description is a question of fact judged as of the relevant filing date. Falko–Gunter Falkner v. Inglis, 448 F.3d 1357, 1363 (Fed. Cir. 2006). An ipsis verbis disclosure, however, is not necessary to satisfy the written description requirement. Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). The disclosure need only reasonably convey to a POSA that the inventor had possession of the subject matter in question, even if every nuance of the claims is not explicitly described in the specification. Id.; see Ariad, 598 F.3d at 1351.” slip op. at 23
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not enabledNot shown unpatentable
“Under 35 U.S.C. § 112(a), enablement is separate and distinct from the written-description requirement. Ariad, 598 F.3d at 1344. “The test of enablement is whether one reasonably skilled in the art could make or use the invention from the disclosures in the patent coupled with information known in the art without undue experimentation.” United States v. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988). “[A] patent specification complies with the statute even if a ‘reasonable’ amount of routine experimentation is required in order to practice a claimed invention.” Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1371 (Fed. Cir. 1999). Whether undue experimentation is needed is not a single, simple factual determination, but rather is a conclusion reached by weighing many factual considerations. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). These factors, referred to as the Wands factors, include: (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breath of the claims. Wands, 858 F.2d at 737. It is Petitioner’s burden to show by a preponderance of the evidence that the claims of the ’989 patent lack enablement. 35 U.S.C. § 326(e). Petitioner’s evidence and argument does not sufficiently establish that the ’989 patent fails to teach those in the art to make and use the claimed invention without undue experimentation. See PO Resp. 58–66. The Petition does not address the Wands factors sufficiently so as to show that undue experimentation is required to make or use the claimed invention. For example, neither the Petition nor Dr. Pearce sufficiently addresses the state of the prior art or the relative skill of those in the art. See Pet. 64–65; Ex. 1002 ¶¶ 145–152; PO Resp. 62. As Patent Owner argues, this is an “omission[] that [is] particularly fatal” to Petitioner’s enablement argument, because Petitioner argues that mechanical expansion and inflation expansion are incompatible and cannot be combined. PO Resp. 62; see Pet. 30–38, 64. Dr. Grundfest, however, testifies that it was well known to combine mechanical and balloon-based expansion in surgical devices. Ex. 2005 ¶¶ 132–136; PO Resp. 56. During cross-examination, Dr. Pearce testified that he “thought about the state-of-the-art in minimally invasive surgery during the 1990s.” Ex. 2003 18:1–14. Dr. Pearce’s testimony is conclusory and does not sufficiently address whether he considered whether it was well known to combine mechanical expansion and inflation expansion in surgical devices. For another example, relying upon the testimony of Dr. Pearce, the Petition asserts that a redesign of the expansion design disclosed in the ’989 patent “would take a substantial amount of time and cost to achieve.” Pet. 65 (citing Ex. 1002 ¶ 149). Likewise, Dr. Pearce testifies, “[s]uch a redesign would take a substantial amount of time and cost to achieve.” Ex. 1002 ¶ 149. Dr. Pearce, however, does not explain sufficiently why combining mechanical expansion and inflation expansion would require a substantial amount of time and cost. See id. For these reasons, we determine that Petitioner has not met its burden of showing by a preponderance of evidence that claims 1–19 are unpatentable under 35 U.S.C. § 112(a) for lack of enablement.” slip op. at 33
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Factors that may be considered in determining level of ordinary skill in the art include: (1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (quoting Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983)). We are not persuaded that Dr. Pearce’s testimony concerning the level of skill in the art is erroneous to the extent it does not explicitly require experience related to devices used for uterine surgical procedures or surgical devices that employ expandable inflation-based and mechanical-based components. Patent Owner’s argument and Dr. Grundfest’s testimony is inconsistent with the ’989 patent, which does not disclose an ablation device or method of using an ablation device that solves problems unique to endometrial ablation or unique to surgical devices that employ expandable inflation-based and mechanical-based components. The ’989 patent does not limit the art to be “the field of minimally invasive surgical and uterine devices” (Ex. 2005 ¶ 60). The ’989 patent states: “The present invention relates generally to the field of apparatuses and methods for ablating or coagulating the interior surfaces of body organs. Specifically, it relates to an apparatus and method for ablating the interior linings of body organs such as the uterus and gallbladder.” Ex. 1001, 1:20–24; see also id. at 2:36–38 (“The present invention is an apparatus and method of ablation and/or coagulating tissue, such as that of the uterus or other organ”).” slip op. at 16
Patent outcomesUS 9,247,989 unpatentable§ 112 disclosurePatents in suitUS 9,247,989
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.