• Chongqing Yanmei Technology Co., Ltd. v. Terves, LLCInstituted
  PTAB · Aug 30, 2023 · IPR2023-00521 · APJ Jon B Tornquist · IPR · Institution

  The Board instituted IPR on claims 19–61 and 63–81 on all petitioned grounds, finding a reasonable likelihood that Doud anticipates claims 19–61 and 63–75.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, we determine that Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one claim of the ’740 patent. Accordingly, we grant institution of an inter partes review.” slip op. at 2

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

    “the application describe the claim limitations exactly,” the application must demonstrate to persons of ordinary skill in the art that the applicants invented a composition including those limitations. Wertheim, 541 F.2d at 262. On its face, the range of “at least 0.01 wt. %” encompasses a range that is broader than 0.01–35 wt. %, and Patent Owner does not sufficiently explain why a person of ordinary skill in the art would understand from merely a disclosure of 35 wt.% that the inventors were in possession of the entire claimed range for copper, cobalt, or nickel in the magnesium composition.” slip op. at 11

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

    “On this record, the term “at least 0.01 wt. %” in the ’740 patent encompasses values for nickel, copper, and cobalt that are higher than the 35 wt. % (nickel and copper) and 20 wt. % (cobalt) limits outlined in the parent and grandparent applications. Accordingly, we determine that there is a reasonable likelihood that claim 19 of the ’740 patent is not entitled to the benefit of the filing dates of its priority applications. Challenged claims 20–61 and 63–75 depend from claim 19 and there is no argument presented that these claims have independent written description support in Doud. For example, there is no evidence presented that any of these dependent claims narrow the ranges for each of copper, nickel, and cobalt recited in in the ’295 application for these claims.7 Accordingly, for purposes of this Decision, we apply Doud as prior art to challenged claims 19–61 and 63–75.” slip op. at 12

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

    “as the ’740 patent. For example, Doud and the ’740 patent both disclose a method of forming a novel magnesium composite that includes melting an AZ91D magnesium alloy containing 90 wt. % magnesium, 9 wt. % aluminum, and 1 wt. % zinc. Ex. 1005 ¶¶ 45, 47; Ex. 1001, 21:43–51, 22:48–53, 33:32–43, 34:9–12. To this alloy is added either 7 wt. % nickel or 10 wt. % copper. Ex. 1005 ¶¶ 45, 47, 53, 57; Ex. 1001, 21:48–51, 22:53–56, 33:35–36, 34:12–13. These additives are mixed in the magnesium alloy at a temperature that is less than the melting point of copper or nickel, and the casting is then cooled. Ex. 1005 ¶¶ 45, 47, 53, 57; Ex. 1001, 21:51–54, 22:56–58, 33:35, 34:12-13. Doud reports that nickel and copper, when added to molten magnesium, will form Mg2Ni and CuMg2 intermetallic, galvanically-active, in situ precipitates. Ex. 1005 ¶¶ 12–13. Doud discloses that the dissolution rate of the resulting casting material is either 325 mg/cm2-hr (nickel) or 50 mg/cm2-hr (copper) in a 3% KCl solution at 90° C. Ex. 1005 ¶¶ 45, 47, 53, 57; Ex. 1001, 21:60–62, 22:61–63, 33:41–43, 34:15–17. Doud also discloses that the average particle diameter of the additives used in the invention is generally “at least about 0.1 microns” and “typically no more than about 500 microns.” Ex. 1005 ¶ 6. Petitioner explains how the identified disclosures of Doud anticipate independent claim 19. Pet. 39–40. Petitioner also identifies where the limitations of dependent claims 20–61 and 63–75 are disclosed in Doud. Id. at 41–45. Patent Owner does not address Petitioner’s anticipation arguments with respect to claims 19–61 and 63–75, apart from arguing that Doud is not prior art to these claims. Prelim. Resp. 27–39. demonstrates a reasonable likelihood that claims 19–61 and 63–75 are anticipated by Doud.” slip op. at 16

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denial
  Patents in suitUS 10,689,740
• Dr. Reddy’S Laboratories, Ltd. / Dr. Reddy’S Laboratory, Inc. v. Helsinn Healthcare S.A.Institution denied
  PTAB · Aug 17, 2016 · PGR2016-00008 · APJ Toni R Scheiner · PGR · Institution

  The Board denied institution because Petitioner did not show that claims 1–19 lacked written-description support or violated the AIA on-sale bar.

  RulingsInstitution decision

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

    “35 U.S.C. § 324(c); 37 C.F.R. § 42.4(a). The standard is set forth in § 324(a), which provides that a post-grant review shall not be instituted unless “the Director determines that 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.” After considering the Petition and the Preliminary Response, we determine that Petitioner has failed to demonstrate that it is more likely than” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable

    “The written description requirement is satisfied when the specification “set[s] forth enough detail to allow a person of ordinary skill in the art to understand what is claimed and to recognize that the inventor invented what 7 Patent Owner additionally provides Appendix A to the Preliminary Response. Appendix A purportedly maps the requirements of claims 1–19 to the specification. 11 is claimed.” University of Rochester v. G.D. Searle & Co., Inc., 358 F.3d 916, 928 (Fed. Cir. 2004). Here, it is undisputed that the specification describes formulations comprising the same ingredients, in the same amounts, concentrations, and combinations required by the challenged claims. Given this disclosure, one of ordinary skill in the art could hardly fail to recognize a description of the claimed formulations in the specification, whether or not the claims recite that the formulations are stable.” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › On-sale bar (Pfaff, Helsinn)Not shown unpatentableNot shown unpatentable

    “A person shall be entitled to a patent unless—(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention . . . . As an AIA first-inventor-to-file patent, the ’942 patent is subject to AIA § 102(a)(1). Thus, the dispositive issue in this case is whether § 102(a)(1) requires a public sale or offer for sale of the claimed invention to trigger the on-sale bar.” slip op. at 18

  § 102 anticipation§ 112 disclosure
  Patents in suitUS 9,173,942
• Nintendo Of America Inc. / Nintendo Co., Ltd. v. Ilife TechnologiesAll claims unpatentable
  PTAB · Apr 28, 2016 · IPR2015-00106 · APJ Michelle R Osinski · IPR · Final written decision

  Claims 1–3, 21, and 22 are unpatentable: claims 2–3 as obvious over Yasushi and claims 1–3, 21, and 22 as obvious over Unuma.

  RulingsFinal written decision

  • Skill levelOther
  • Obviousness (§103) › Analogous artNot reached
  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateNot entitled to earlier dateMixed

    “[of Figure 1] also senses along a third axis.” Pet. Reply 5. We do not find this argument persuasive for the reasons discussed above in relation to claim construction. In view of how we have construed the claims at issue, Patent Owner does not need to show written description support in its priority documents for a system that measures acceleration along all three axes, but rather must show support for a sensor that senses accelerative phenomena with regard to a system of axes (in three dimensions) in relation to which position or motion can be defined. As discussed above, in certain embodiments, such sensing can be accomplished by measuring acceleration along two axes. Petitioner also argues that “a third sensor would need to be added to a two axis accelerometer in order to sense relative to a 3D frame of reference.” Pet. Reply 5 (citing Ex. 1010, 9:25–10:22; 26:20–27:8). Although Dr. Sturges indicates that he “would have had to add another accelerometer orthogonal to the other two” in order “to establish a three-dimensional coordinate system” (Ex. 1010, 10:18–22), we do not find this testimony persuasive to support that a third sensor would be needed in order to sense relative to a three dimensional frame of reference. This portion of testimony relates to how three accelerometers can establish a three-dimensional coordinate system, not whether acceleration measurements in two dimensions provides information regarding a body relative to a 3D frame of reference. See id. at 9:25–10:22. As discussed above, the ’939 patent describes a system that specifically contemplates a fall detection application for a body, which contemplates the up/down (z axis), i.e., measures acceleration along two axes to obtain information about (sense acceleration phenomena of) a body relative to a 3D frame of reference. Ex. 1001, 8:21– 27. As to Dr. Sturges’ further testimony that a dual-axis accelerometer would not establish a three-dimensional coordinate system (Ex. 1010, 27:4– 8), we do not find this testimony persuasive to support a finding that a third sensor is needed in order to sense relative to a three dimensional frame of reference. A dual axis accelerometer alone, without additional information regarding the system/environment in which it will be operating, is different from a dual axis accelerometer defined to be in a particular orientation. For example, consistent with our discussion above regarding disclosures in the Specification, Dr. Sturges has testified that a third axis could be defined even if there was no sensing along that axis. See, e.g., Ex. 1010, 45:15–21 (“Q. So how is that Z axis—so it’s drawn in there as a third dimension, but what is defining that Z axis? A. That those axes are relative to the space in which the instrument exists, and the axes are attached so that we can see the – the frame of reference clearly in that figure.”). Accordingly, we determine that Patent Owner has shown sufficiently how the parent application (filed on September 15, 1999) describes sensing acceleration phenomena of a body relative to a 3D frame of reference, as recited in the challenged claims. Petitioner also argues that two inventors of the ’939 patent “confirmed that sensing acceleration relative to a 3D frame of reference requires sensing along three axes (‘up and down, front to back, and side to side’).” Pet. Reply 5 (citing Ex. 2007, 11; Ex. 2008, 19). We also are not persuaded by this argument, which essentially contends that disclosure of three acceleration measuring devices is required to establish written description support here. As discussed above, a sensor that comprises two acceleration” slip op. at 24

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedPriority date, deniedMixed

    “For the foregoing reasons, we determine that Patent Owner has shown sufficiently that the written description of the parent application filed on September 15, 1999, conveyed with reasonable clarity that the inventors were in possession of a sensor that sensed accelerative phenomena of a body with regard to a system of axes (in three dimensions) in relation to which position or motion could be defined in the environment, in accordance with the construction of the claim as set forth above. Accordingly, we determine that claim 1 is entitled to a priority date of September 15, 1999. In the Decision on Institution, we also noted that “entitlement to priority is decided on a claim-by-claim basis, and various claims may be entitled to different priority dates.” Dec. Inst. 15 (quoting X2Y Attenuators, LLC v. Int’l Trade Comm’n, 757 F.3d 1358, 1366 (Fed. Cir. 2014)). Petitioner’s basis for asserting that dependent claims 2 and 3 lack written description support in the parent application filed on September 15, 1999 appears to be their dependence on independent claims 1 and 11. Pet. Reply 5 (citing Ex. 1011 ¶¶ 11–23). Patent Owner asserts that dependent claim 2 is also entitled to a priority date of at least September 15, 1999. Prelim. Resp. 13. Patent Owner makes no such assertion regarding dependent claim 3 being entitled to the September 15, 1999 priority date. See id. Petitioner bears the burden of going forward with evidence that there is art prior to the application date of the ’939 patent that either anticipates or renders obvious the claims of the ’939 patent, which it has. Patent Owner then has the burden of going forward with evidence (i) that the prior art does not actually anticipate or render obvious the claims, or (ii) that the alleged prior art is not actually prior art because the challenged claim is entitled to the benefit of a filing date prior to the date of the alleged prior art. The second item requires Patent Owner to show why the written description in the earlier application supports the claim. See Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008). Dependent claim 2 recites “wherein one of said plurality of different” slip op. at 28

  Patent outcomesUS 6,703,939 unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 6,703,939
• Nintendo Of America, Inc. / Nintendo Co., Ltd. v. Ilife Technologies, Inc.All claims unpatentable
  PTAB · Apr 28, 2016 · IPR2015-00115 · APJ Jacqueline Wright Bonilla · IPR · Final written decision

  Claims 1 and 11 are unpatentable as obvious over Unuma; the Yasushi ground fails because Yasushi is not prior art.

  RulingsFinal written decision

  • BurdenDecided for patent owner

    “Yasushi was published on November 10, 1998. As described above, claims 1 and 11 of the ’890 patent are entitled to a priority date of September 15, 1999. Thus, Yasushi is available as prior art against these claims under 35 U.S.C § 102(a) unless Patent Owner establishes (i) a reduction to practice before November 10, 1998, or (ii) conception before November 10, 1998, followed by a diligent reduction to practice. Purdue Pharma L.P. v. Boehringer Ingelheim GMBH, 237 F.3d 1359, 1365 (Fed. Cir. 2001) (“To antedate . . . an invention, a party must show either an earlier reduction to practice, or an earlier conception followed by a diligent reduction to practice.”) (emphasis added) (citation omitted).” slip op. at 27

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

    “[of Figure 1] also senses along a third axis.” Reply 5. We do not find this argument persuasive for the reasons discussed above in relation to claim construction. In view of how we have construed the claims at issue, Patent Owner does not need to show written description support in its priority documents for a system that measures acceleration along all three axes, but rather must show support for a sensor that senses accelerative phenomena with regard to a system of axes (in three dimensions) in relation to which position or motion can be defined. As discussed above, in certain embodiments, such sensing can be accomplished by measuring acceleration along two axes. Petitioner also argues that “a third sensor would need to be added to a two axis accelerometer in order to sense relative to a 3D frame of reference.” Reply 5 (citing Ex. 1012, 9:25–10:22; 26:20–27:8). Although Dr. Sturges indicates that he “would have had to add another accelerometer orthogonal to the other two” in order “to establish a three-dimensional coordinate system” (Ex. 1012, 10:18–22), we do not find this testimony persuasive to support that a third sensor would be needed in order to sense relative to a three dimensional frame of reference. This portion of testimony relates to how three accelerometers can establish a three-dimensional coordinate system, not whether acceleration measurements in two dimensions provides information regarding a body relative to a 3D frame of reference. See id. at 9:25–10:22. As discussed above, the ’890 patent describes a system that specifically contemplates a fall detection application for a body, which contemplates the up/down (z axis) of interest, i.e., measures acceleration along two axes to obtain information about (sense acceleration phenomena of) a body relative to a 3D frame of reference. Ex. 1001, 8:64–9:17. As to Dr. Sturges’ further testimony that a dual-axis accelerometer would not establish a three-dimensional coordinate system (Ex. 1012, 27:4– 8), we do not find this testimony persuasive to support a finding that a third sensor is needed in order to sense relative to a three dimensional frame of reference. A dual axis accelerometer alone, without additional information regarding the system/environment in which it will be operating, is different from a dual axis accelerometer defined to be in a particular orientation. For example, consistent with our discussion above regarding disclosures in the specification, Dr. Sturges has testified that a third axis could be defined even if there was no sensing along that axis. See, e.g., Ex. 1012, 45:15–21 (“Q. So how is that Z axis—so it’s drawn in there as a third dimension, but what is defining that Z axis? A. That those axes are relative to the space in which the instrument exists, and the axes are attached so that we can see the – the frame of reference clearly in that figure.”). Accordingly, we determine that Patent Owner has shown sufficiently how the great-grandparent application (filed on September 15, 1999) describes sensing acceleration phenomena (claim 1), and measuring dynamic and static acceleration (claim 11), of a body relative to a 3D frame of reference, as recited in the challenged claims.” slip op. at 22

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “For the foregoing reasons, we determine that Patent Owner has shown sufficiently that the written description of the great-grandparent application filed on September 15, 1999, conveyed with reasonable clarity that the inventors were in possession of a sensor that sensed accelerative phenomena, as recited in claim 1 (or measured dynamic and static acceleration, as recited in claim 11), of a body with regard to a system of axes (in three dimensions) in relation to which position or motion could be defined in the environment, in accordance with the construction of the claims as set forth above. Accordingly, we determine that claims 1 and 11 are entitled to a priority date of September 15, 1999.” slip op. at 26

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Reference not prior artNot shown unpatentableNot shown unpatentable

    “Yasushi was published on November 10, 1998. As described above, claims 1 and 11 of the ’890 patent are entitled to a priority date of September 15, 1999. Thus, Yasushi is available as prior art against these claims under 35 U.S.C § 102(a) unless Patent Owner establishes (i) a reduction to practice before November 10, 1998, or (ii) conception before November 10, 1998, followed by a diligent reduction to practice. Purdue Pharma L.P. v. Boehringer Ingelheim GMBH, 237 F.3d 1359, 1365 (Fed. Cir. 2001) (“To antedate . . . an invention, a party must show either an earlier reduction to practice, or an earlier conception followed by a diligent reduction to practice.”) (emphasis added) (citation omitted).” slip op. at 27

  Patent outcomesUS 7,479,890 unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosure
  Patents in suitUS 7,479,890
• Nintendo Of America, Inc. / Nintendo Co., Ltd. v. Ilife Technologies, Inc.All claims unpatentable
  PTAB · Apr 28, 2016 · IPR2015-00112 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1, 2, 11, and 12 are unpatentable: claims 2 and 12 as obvious over Yasushi, and claims 1, 2, 11, and 12 as obvious over Unuma.

  RulingsFinal written decision

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

    “For the foregoing reasons, we construe “a sensor . . . that senses accelerative phenomena of said body relative to a three dimensional frame of reference in said environment” as “a sensor that senses accelerative phenomena of a body with regard to a system of axes (in three dimensions) in relation to which position or motion can be defined in the environment.” The recited “sensor” comprises a plurality of acceleration devices, i.e., at least two devices, that measure acceleration along at least two axes.” slip op. at 17

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

    “There is nothing in the Specification that indicates a deviation from this ordinary meaning. Accordingly, the plain language of the claim means that the sensor senses accelerative phenomena of said body with regard to a three dimensional frame of reference. We also interpret “three dimensional frame of reference” to refer to “a system of axes (in three dimensions) in relation to which position or motion can be defined.” (see The Oxford English Dictionary, available at http://www.oed.com/view/Entry/317084?redirectedFrom=frame+of+referen ce#eid (last visited Apr. 26, 2016) (Ex. 3006) (defining “frame of reference” as “[a] system of coordinate axes in relation to which size, position, or motion, can be defined;” see also Ex. 1001, 2:25–27 (“the present invention introduces systems, as well as methods of operating such systems, for evaluating movement of a body relative to an environment”), 2:53–56 (“the sensor may be a plural-axis sensor that senses accelerative phenomena and generates an output signal to the processor indicative of measurements of both dynamic and static acceleration of the body in plural axes”). In other words, the plain language of the claim refers to a sensor that senses accelerative phenomena of said body with regard to a system of axes (in three dimensions) in relation to which position or motion can be defined.” slip op. at 12

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateNot entitled to earlier dateMixed

    “For the foregoing reasons, we determine that Patent Owner has shown sufficiently that the written description of the grandparent application filed on September 15, 1999, conveyed with reasonable clarity that the inventors were in possession of a sensor that sensed accelerative phenomena of a body with regard to a system of axes (in three dimensions) in relation to which position or motion could be defined in the environment, in accordance with the construction of the claim as set forth above. Accordingly, we determine that claims 1 and 11 are entitled to a priority date of September 15, 1999. In the Decision on Institution, we also noted that “entitlement to priority is decided on a claim-by-claim basis, and various claims may be entitled to different priority dates.” Dec. on Inst. 16 (quoting X2Y Attenuators, LLC v. Int’l Trade Comm’n, 757 F.3d 1358, 1366 (Fed. Cir. 2014)). Petitioner’s basis for asserting that dependent claims 2 and 12 lack written description support in the parent application filed on September 15, 1999 appears to be their dependence on independent claims 1 and 11. Reply 6 (citing Ex. 1012 ¶¶ 13–25). Patent Owner makes no assertion that dependent claims 2 and 12 are entitled to the September 15, 1999 priority date. Prelim. Resp. 12–14. Petitioner bears the burden of going forward with evidence that there is art prior to the application date of the ’331 patent that either anticipates or renders obvious the claims of the ’331 patent, which it has. Patent Owner then has the burden of going forward with evidence (i) that the prior art does not actually anticipate or render obvious the claims, or (ii) that the alleged prior art is not actually prior art because the challenged claim is entitled to the benefit of a filing date prior to the date of the alleged prior art. The second item requires Patent Owner to show why the written description in the earlier application supports the claim. See Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008). Dependent claims 2 and 12 recite “wherein one of said plurality of” slip op. at 28

  Patent outcomesUS 7,095,331 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosure
  Patents in suitUS 7,095,331
• Nintendo Of America, Inc. / Nintendo Co., Ltd. v. Ilife Technologies, Inc.No claims unpatentable
  PTAB · Apr 28, 2016 · IPR2015-00109 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1–3, 9–12, and 18–20 were not shown unpatentable under § 103 over Yasushi because Yasushi was not prior art.

  RulingsFinal written decision

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

    “Turning first to the express language of independent claims 1 and 10, claim 1 recites a “system within a communications device capable of evaluating movement of a body relative to an environment . . . wherein said communication1 device transmits said tolerance indicia,” and claim 10 recites a “method for operating a system within a communications device . . . wherein said method comprises the steps of . . . transmitting said tolerance indicia through said communications device.” We, thus, agree with Patent Owner that claims 1 and 10 only require the “communications device” to transmit tolerance indicia. The ’796 patent also states that the “term ‘communication device’ is defined broadly to include, without limitation, cellular telephones, personal digital assistants, hand held computers, laptops, computers, wireless Internet access devices, and other similar types of communications equipment.” Ex. 1001, 2:46–50. Because of the qualifiers “broadly,” “without limitation,” and “other similar types of communications equipment,” we do not find that the ’796 patent’s purported definition of “communication device” limits the” slip op. at 12

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

    “describes that “[s]ystem 11 includes circuit boards 13 and 15 . . . associated with a housing (generally designated 17),” that “[h]ousing 17 may comprise . . . halves 19 and 21 that encase boards 13 and 15,” and that “[s]ystem 11 includes a processor . . . and a sensor 25.” Ex. 1007, 39:10–12, 39:16–19, 40:4–5; see also Ex. 1001, 5:25–28, 5:32–36, 5:45–46. Figure 2 illustrates system 11, “which includes processing circuitry 39, indicating means 41, . . . along with sensor 25” and shows sensor 25 on board 15 within housing 17. Ex. 1007, 42:18–21; see also Ex. 1001, 6:48–51. The grandparent application also describes that an “[e]xemplary indicating means 41 . . . [is] operable to . . . communicate such state, or tolerance, indicia to a monitoring controller,” that “[i]ndicating means 41 may take any number of forms,” and that “in system 11 of the present embodiment, stage 41 is an RF transmitter.” Ex. 1007, 43:14–20. Based on these descriptions of system 11 with an RF transmitter, we find that the grandparent application provides adequate written description support for the “communications device” recited by the challenged claims.” slip op. at 19

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “In order to receive benefit of the filing date of an application previously filed in the United States, the subsequent application for patent must be for an invention disclosed in the manner provided in 35 U.S.C. § 112, first paragraph. 35 U.S.C. § 120; see also 37 C.F.R. § 1.78; see Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998) (discussing requirements of claiming benefit of priority date of earlier application under 35 U.S.C. § 120).3 To satisfy 35 U.S.C. §112, first paragraph, the written description must convey with reasonable clarity to those skilled in the art that the inventor was in possession of the claimed invention. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991). One shows “possession” of the invention by describing the invention using such descriptive means as words, structures, figures, diagrams, formulas, etc. that fully set forth the claimed invention. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). The issue of whether the written 3 The subsequent application must also be filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the previously filed application and contain or be amended to contain a specific reference to the previously filed application. 35 U.S.C. § 120; see also 37 C.F.R. § 1.78. In this case, the application that matured into the ’796 patent was filed on December 30, 2002, which is before the patenting of the parent application on December 31, 2002, which was similarly entitled to the benefit of the filing date of the grandparent application. Ex. 1001, 1; Ex. 1007, 8. The application that matured into the ’796 patent contained a specific reference to the grandparent application. Ex. 1006, 38. description requirement has been satisfied is a question of fact. Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 865 (Fed. Cir. 1993).” slip op. at 17

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Reference not prior artDecided for patent owner

    “overcome Yasushi’s publication date.4 See In re Facius, 408 F.2d 1396, 1403–04 (CCPA 1969) (holding, in a prosecution context, that an earlier filed reference was prima facie available as prior art and placing the burden on the party claiming prior invention to overcome that reference). Patent Owner may meet its burden by providing evidence that the publication date of the reference is not “before the invention thereof by the applicant for [a] patent,” 35 U.S.C. § 102(a), that is, antedating Yasushi. Yasushi was published on November 10, 1998. As described above, claims 1–3, 9–12, and 18–20 of the ’796 patent are entitled to a priority date of September 15, 1999. Thus, Yasushi is available as prior art against these claims under 35 U.S.C § 102(a) unless Patent Owner establishes (i) a reduction to practice before November 10, 1998, or (ii) conception before November 10, 1998, followed by a diligent reduction to practice. Purdue Pharma L.P. v. Boehringer Ingelheim GMBH, 237 F.3d 1359, 1365 (Fed. Cir. 2001) (“To antedate . . . an invention, a party must show either an 4 Even though Patent Owner bears the burden of production in antedating a reference, the burden of persuasion to prove unpatentability of the challenged claims remains with Petitioner. See 35 U.S.C. § 316(e). earlier reduction to practice, or an earlier conception followed by a diligent reduction to practice.”) (emphasis added) (citation omitted). Reduction to practice is a question of law predicated on subsidiary factual findings. Brown v. Barbacid, 276 F.3d 1327, 1332 (Fed. Cir. 2002). To establish an actual reduction to practice, the inventor must prove that: (1) an embodiment of the invention was constructed that meets all the limitations of the claims at issue; and (2) the inventor appreciated that the invention would work for its intended purpose. Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998). The invention does not have to be at a commercially satisfactory stage of development for an actual reduction to practice, but must have been sufficiently tested to demonstrate that it will work for its intended purpose. See, e.g., Scott v. Finney, 34 F.3d 1058, 1062 (Fed. Cir. 1994) (citing numerous cases wherein the character of the testing necessary to support an actual reduction to practice varied with the complexity of the invention and the problem it solved). It is well settled that an inventor’s testimony alone is insufficient to” slip op. at 22

  Patent outcomesUS 6,864,796 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosure
  Patents in suitUS 6,864,796
• JDS Uniphase Corporation v. Fiber, LLCSome claims unpatentable
  PTAB · Dec 5, 2014 · IPR2013-00336 · APJ Jacqueline Wright Bonilla · IPR · Final written decision

  Claims 112, 123, 124, 127, 129, 131, 133, and 134 are unpatentable as obvious over Chande; the remaining challenged claims were not shown unpatentable, and the motion to amend was denied.

  RulingsFinal written decision

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

    “of the phrase “servo control” refers to a “control” element, as opposed to a “servo control” or “data gathering and transmission” element, as recited in challenged claims, where the “servo control” in the provisional application controls movement of a mirror using a “push+pull magnetic force,” for example. Ex. 2006, 7. Consistently, the provisional application states that “[i]t may be desirable to add damping mechanism for better servo control,” i.e., to control movement of the mirrors, and that “resulting push+pull magnetic force is more linear and also larger than the pull only design, and allows for better servo control,” i.e., control of the position of the mirrors. Id. at 5, 7; see also PO Resp. 18. Patent Owner’s position relies on an inherency argument in relation to one sentence in the provisional application, as discussed above, which indicates that after velocity of the mirror is “zeroed,” “currents are adjusted to hold it in place.” Ex. 2006, 7. We are not persuaded that this one sentence describing the adjustment of currents to hold a mirror in place necessarily describes a closed-loop, feedback system, or “an error signal” that is “used in order to correct the angular changes so as to reduce that error signal,” as stated by Dr. Smith. PO Resp. 19–12 (citing Ex. 2017, 44). We do not see how this sentence, expressly or inherently, describes a separate “servo control element” or “data gathering and transmission element” as recited in claims 112 and 123, respectively (i.e., something different from the “control” element of each of those claims, which corresponds to the “servo control” in the provisional application), where each element provides a feedback signal regarding current orientation of the mirror or current location of the optical beam.” slip op. at 15

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “We are not persuaded that Chande and Buchin are non-analogous art to each other because, as Petitioner points out, both references are directed to optical switching and coupling of laser light to receptors with rotational reflective elements. Id. at 22. We still address, however, whether one of ordinary skill in the art would have had reason to combine the elements disclosed in Chande and Buchin when making the optical switch of claims 130 and 132.” slip op. at 34

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

    “As an initial matter, we note that Petitioner cites no evidence, such as a declaration from an expert witness, in support of those contentions. Id. In any event, Petitioner does not explain sufficiently how, or show by a preponderance of the evidence why, one would have added a stationary mirror or focusing lens “disposed between a source and one of the first movable mirrors,” as Petitioner contends is disclosed in Buchin, to the system described in Chande. Petitioner’s assertion that “inclusion of additional sources” would have been predictable or accomplished does not explain, nor provide evidence, as to why one would have included an additional stationary mirror or a focusing lens in a different location, i.e., elements that differ from “additional sources,” in the optical switch of Chande. Id.; see also Reply 12 (stating only that Chande and Buchin are both in the field of optical switching, and Patent Owner’s “attempts to read limitations from the specification into the claims is improper”). Thus, we are not persuaded that Petitioner shows by a preponderance of the evidence that an ordinary artisan would have included a stationary mirror, or focusing lens “disposed between a source and one of the first movable mirrors,” as recited in challenged claims 130 and 132 and Petitioner contends are disclosed in Buchin, in the optical switch disclosed in Chande.” slip op. at 35

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “Oakley, Inc. v. Sunglass Hut Int’l, 316 F.3d 1331, 1339 (Fed. Cir. 2003). Thus, a motion to amend claims must identify how the proposed substitute claims are to be construed, especially when the proposed substitute claims introduce new claim terms. See Idle Free Sys., Inc. v. Bergstrom, Inc., Case IPR2012-00027, slip op. at 7 (PTAB June 11, 2013) (Paper 26). In its Motion to Amend, Patent Owner introduces three new claim terms— i.e., “communications,” “fiber,” and “fiber optical”—in its proposed substitute claims. Patent Owner argues that those claim features distinguish the proposed substitute claims from the prior art. See, e.g., Motion 11–14. Patent Owner does not provide, however, adequate claim constructions or explanations for how the new claim terms should be construed. For example, in relation to the term “communications,” Patent Owner offers, at most, that the addition of this term means that the recited subject matter “involve[s] switches only in the fiber optic communications field of endeavor,” and that the term identifies claimed components as “related to a fiber optic switching device that switches optical beams containing communications signals.” Id. at 5, 11–12. Simply referring to the terms “communications,” “fiber,” and “fiber optic” in the Motion to Amend does not define adequately an ordinary and customary meaning of “communications,” as would be understood by one of ordinary skill in the art in the context of the Specification (which itself does not define “communications”). Ex. 1001, 1:11–14 (presenting the one time the term “communication” is used in the ’332 patent Specification). During the oral hearing, Patent Owner’s counsel, upon questioning, proposed that “communication” means “a beam of light, with a frequency around approximately 1500 nanometers.” Paper 39, 47:4–13. The Motion to Amend, however, does not suggest such a claim construction, nor refer to any evidence, e.g., a dictionary or scientific definition, in support. Moreover, as discussed during the oral hearing, it is not clear from the record if “communication” might mean simply “transmission of information,” a definition not limited to a beam of light at 1500 nm. Id. at 53:14–55:18. Without a reasonable construction of the new claim features added by the proposed substitute claims, Patent Owner’s Motion does not provide adequate information for us to determine whether its proposed substitute claims are patentable over the prior art generally. Thus, we are not persuaded that Patent Owner has met its burden to demonstrate patentability of the proposed substitute claims under 37 C.F.R. § 42.20(c). 2. Written Description Support A motion to amend claims must identify clearly the written description support for each proposed substitute claim. 37 C.F.R. § 42.121(b). The written description test is whether the original disclosure of the application relied upon reasonably conveys to a person of ordinary skill in the art that the inventor had possession of the claimed subject matter as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Thus, the motion should account for the claimed subject matter as a whole, i.e., the entire proposed substitute claim, when showing where there is sufficient written description support for each claim feature. See Nichia Corp. v. Emcore Corp., Case IPR2012-00005, slip op. at 4 (PTAB June 3, 2013) (Paper 27).” slip op. at 50

  Patent outcomesUS 6,430,332 mixed
  § 103 obviousness§ 112 disclosure
  Patents in suitUS 6,430,332

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