- Chongqing Yanmei Technology Co., Ltd. v. Terves, LLCSome claims unpatentablePTAB · Aug 27, 2024 · IPR2023-00521 · APJ Jon B Tornquist · IPR · Final written decision
Claims 19–61, 63–77, and 79 are unpatentable as anticipated by Doud; claims 78, 80, and 81 are not shown unpatentable. The contingent motion to amend is granted in part and denied in part.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have at least a Ph.D. in chemistry, metallurgy, or material science or material engineering” or, in the alternative, “would have a Bachelor of Science or Master of Science degree in one of these disciplines plus experience involving the use and design of dissolvable metal alloys for use in creating tools and other downhole parts for well drilling or completion activities.” Pet. 13–14. Patent Owner does not oppose Petitioner’s contentions regarding the level of ordinary skill in the art. PO Resp. 12 n.4. Upon review of the prior art of record and the parties’ arguments, we adopt Petitioner’s unopposed definition of the ordinarily skilled artisan as it is consistent with the prior art of record.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“With respect to claim 19, Petitioner proposes constructions for the terms “in situ precipitate” and “a plurality of particles of said in situ precipitate having a size of no more than 50 µm.” Pet. 11–12. With respect to claims 76–81, Petitioner proposes a construction for the term “wherein said additive material includes one or more metal materials selected from the group consisting of 0.1–35 wt. % copper, 0.1–24.5 wt. % nickel and 0.1–20 wt. % cobalt.” Id. at 13. Patent Owner contends no claims require construction for purposes of this Decision. PO Resp. 12 n.4, 17–18; Mot. 16–17. Upon review of the prior art of record, we determine that no claim terms require express construction for purposes of this Final Written Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateWritten description adequateMixed
“Ex. 2027, 20:25–21:5 (emphasis added). The disclosure that the “magnesium composite” of “[t]he present invention” “includes at least 50 wt% magnesium” is unambiguous and constitutes strong evidence that the inventors were not in possession of a magnesium composite with less than 50 wt. % magnesium, or additive concentrations above 50 wt. %. See SciMed Life Systems, Inc. v. Advanced Cardiovasular Systems, Inc., 242 F.3d 1337, 1343 (Fed. Cir. 2001) (noting that a description of the “present invention” as having a particular structure “is strong evidence that the claims should not be read to encompass the opposite structure”). Consistent with this conclusion, the original claims of the ’295 application all limited the additive material in the composite to 0.05 wt %–45 wt %. Ex. 2027, 26:1– 13, 29:9–15. Likewise, in each example where copper, nickel, or cobalt additives are used in the range recited in the proposed substitute claims, the magnesium composite is “over 50 wt% magnesium,” and any claims that do not require this range of magnesium are limited to an additive range of “about 0.05 wt%–45 wt% of said mixture.”8 Ex. 2027, 6:13–7:4, 7:16–19, 8 Written description support is considered from the view point of the ordinarily skilled artisan. Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Patent Owner, bearing the burden to show written description support in any priority application for which it seeks the benefit of its filing date, provides no testimony from an ordinarily skilled artisan regarding written description support in the ’295 application, or any evidence to show what such an artisan would conclude from the express disclosures of the ’295 application. Lectrosonics, Paper 15 at 7; In re NTP, 654 F.3d 1268, 1276 (Fed. Cir. 2011) (noting that “a patent’s claims are not entitled to an earlier priority date merely because the patentee claims priority . . . Rather, for a patent’s claims to be entitled to an earlier priority date, the patentee must demonstrate that the claims meet the requirements of 35 U.S.C. § 120”). Where there is any ambiguity in the disclosures of the ’295 application, the absence of supporting testimony tends to cut against 26:2–31:2; see Ex. 1005 ¶¶ 12, 13, 18, 19, 16–21, 26, 28, claims 16–21, 26– 28. In view of the foregoing, we are not persuaded that Patent Owner has demonstrated that the inventors of the priority applications were in possession of a magnesium cast composite that included less than 50 wt. % magnesium, or greater than 50 wt. % additives. As proposed substitute claim 104 encompasses a magnesium cast composite with up to 90 wt. % additives, and therefore as little as 10 wt. % magnesium, Patent Owner has not demonstrated that the full scope of this claim finds written description support in any application prior to the ’915 application, filed on October 12, 2018.” slip op. at 17
- Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteIndefiniteMixed
“The definiteness requirement of § 112(a) is satisfied when “a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable clarity.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014); see 37 C.F.R. § 42.100(b) (changing the claim construction standard used to review a claim proposed in a motion to amend from the broadest reasonable construction to the “same construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b)”). Proposed substitute claim 104 generically requires “in situ precipitate” and also a specific type of in situ precipitate: “in situ galvanically-active intermetallic precipitate.” Mot. Appendix A. Although this claim would have best been clarified by Patent Owner after seeking preliminary guidance on its Motion to Amend, upon review of the written description, claims, and figures of the ’740 patent, as well as Patent Owner’s clarification in its Reply to the Opposition, we agree with Patent Owner that one of ordinary skill in the art would have understood that the “in situ galvanically-active intermetallic precipitate” is merely a more complete description of the “in situ precipitate” mentioned earlier in the sentence. Mot. Reply 4. As such, we do not find that this part of proposed substitute claim renders claim 104 indefinite.” slip op. at 22
Patent outcomesUS 10,689,740 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Graham · NautilusPatents in suitUS 10,689,740 - BMW Of North America, LLC / Bayerische Motoren Werke Aktiengesellschaft v. Theodore & Associates, LLCSome claims unpatentablePTAB · Nov 20, 2018 · IPR2017-01380 · APJ Mitchell G Weatherly · IPR · Final written decision
Claims 2, 4, 19, 23, 24, 27–31, 35, 44–46, 48, and 49 are unpatentable under § 103; claims 3, 6, 8–10, 32–34, 36, 37, and 43 were not proven unpatentable.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Mr. Kunselman, neither of whom supports his opinion with objective evidence. Pet. 35 (citing Ex. 1003 ¶ 20); PO Resp. 11–12 (referring to Mr. Kunselman’s opinion appearing at Ex. 2012 ¶¶ 15–21); Reply 20–21 (citing Ex. 1003 ¶ 20; Ex. 1061 ¶¶ 11–13). The level of skill is determined “in the art to which the claimed invention pertains,” 35 U.S.C. § 103, and neither party identifies that art explicitly. The Specification describes the field of invention as follows: “This invention is related to the field of automotive chassis design and more specifically to the area of interchangeable chassis for use with many models of vehicles.” Ex. 1001, 1:17–19. The Specification repeatedly refers to the chassis as having “universal” characteristics. Id. at Title, passim. The Specification also describes an advantage of its chassis as having “an ability to adapt to different bodies and body styles,” id. at 2:17–21, and criticizes prior art chassis designs that “are not readily adaptable to a wide variety of vehicles without forcing major and expensive redesign work for each vehicle,” id. at 1:29–33. Claims 43 and 44 expressly require that the claimed chassis be “universally adapted” for more than one type of vehicular configuration. Id. at 16:40–17:19. Based on these descriptions of the chassis and the express requirements in at least some of the claims at issue, we determine that the art to which the claimed invention pertains is the design of interchangeable chassis for use with many models of vehicles. We consider Mr. Kunselman’s testimony on the level of ordinary skill to be tied more closely to this relevant art of designing a chassis for use with many models of vehicles. Accordingly, we adopt Patent Owner’s definition of the level of ordinary skill for purposes of this Decision and evaluate priority of invention and obviousness from that perspective. We note that both Mr. Parker and Mr. Kunselman possess such a skill level. Ex. 1003 ¶¶ 6–13; Ex. 2012 ¶¶ 4–9.” slip op. at 7
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateNot entitled to earlier dateMixed
“in claims 9 and 32–43 when it states that: “During attachment of the central backbone between the front and rear structures, the operational components (e.g., quill shaft for conventional vehicle, battery for electric or hybrid vehicle), are suitably coupled or connected.” Ex. 1006 ¶ 43. Based on this disclosure in the ’490 App, Mr. Kunselman opines without citing any objective evidence in support that: “The only suitable connection it could be is a wire and a cable. No other option has ever been used, not a metal tab, buss bar, or printed circuit board.” Ex. 2012 ¶ 75 (citing Ex. 1006 ¶ 43). Because the testimony cited by the parties on this issue leads to stalemate, we examine other aspects of the ’490 App and other evidence. Figure 16 of the ’490 App, reproduced at right, illustrates batteries located in a central structure that connects one end of a chassis with a generator to the other end of the chassis with an electric motor. Mr. Parker testifies that components such as wires connecting batteries were “conventional components” that were “well known” and “found in almost all vehicles decades before the ’163 patent was filed.” Ex. 1003 ¶ 61. Figure 16 illustrates batteries within the central spine of the plug-in hybrid chassis, along with the generator on one end, which would charge those batteries, and an e-motor on the other end, which would be powered by those batteries. Ex. 1006, Figure 16. Both experts agree that an electrical wire is a well known type of electrical connection that would be suitable. Ex. 1003 ¶ 61, Ex. 2012 ¶ 75. On the record before us, we determine that Figure 16 in the ’490 App, along with the description of batteries being “suitably coupled and connected” constitutes a description of an electrical connection spanning the batteries within the central spine and to components connected to opposite ends of that spine. This is especially true given the high degree of skill possessed by an ordinarily skilled artisan. Such an artisan would have no trouble recognizing that the ’490 App described using wire to connect batteries located within the central structure and that those wires would span the entire central spine. Ex. 2012 ¶ 75. For this reason, we determine that the wire features of claims 9, 32–37, and 43 are supported by the description in the ’490 App.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“lexicographically define “chassis” but merely describes “another aspect of the universal chassis apparatus.” Reply 17–18. We agree. To act as its own lexicographer, a patentee must “clearly set forth a definition of the disputed claim term” other than its plain and ordinary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.Cir.2002). It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must “clearly express an intent” to redefine the term. Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed.Cir.2008); see also Kara Tech. Inc. v. Stamps.com, 582 F.3d 1341, 1347–48 (Fed.Cir.2009). At most, we understand the passage quoted by Patent Owner to be describing aspects of the “universal chassis apparatus” rather than providing a lexicographical definition of “chassis.” Petitioner also contends that an ordinarily skilled artisan would understand that “chassis” generally refers to the supporting structure or frame upon which the vehicle’s body, drive train, and suspension components are mounted. Reply 18 (citing Ex. 1003 ¶ 31). Petitioner notes that such an understanding is consistent with the definitions of “chassis” provided in two automotive industry dictionaries, one of which is provided by Patent Owner. Id. at 18–19 (citing Ex. 2024;5 Ex. 1063, 45:4–46:2, 46:20–47:14, 52:15–24; Ex. 1061, ¶ 25); see also Ex. 1052, 3 (defining “chassis” as the “[s]tructural lower part of a vehicle to which the running 5 Exhibit 2024 is an excerpt of a 1993 publication entitled “Auto Dictionary” in which “chassis” is defined as follows: “Lower structure of a vehicle to which the running gear and body are attached. On older cars, the chassis was a separate part of the vehicle with its own frame but, today, it is usually an integral part of the body structure.” Ex. 2024, 3. gear6 and body is attached.”). Mr. Kunselman testifies that “a variety of possible definitions for a chassis” exist. Ex. 1063, 74:12–14. Petitioner also points out that Patent Owner’s proffered definition for “chassis” conflicts with the Abstract of the ’163 patent, which indicates that “other components” including the suspension are attached to—and therefore separate from—a “vehicle chassis.” Reply 19 (citing Ex. 1001, Abstract, Ex. 1061 ¶ 26). Based on our review of the entire record, we conclude that “chassis” is neither precisely defined in the Specification nor understood by an ordinarily skilled artisan to have a precise universally agreed upon definition. Rather, “chassis” refers generally to the supporting structure or frame upon which the vehicle’s body, drive train, and suspension components are mounted.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundDecided for petitioner
“Patent Owner’s argument is not persuasive for at least three reasons. First, claims 2 and 27 merely require that the backbone have two sections or segments that together define “a substantially T-shape as viewed from above.” Ex. 1001, 13:41–44 (claim 2), 15:15–24 (claim 27). Even with Brandt’s heel plate 40 positioned between the compartments holding battery units 24 and 28, we consider the combination of Brandt’s two compartments to be arranged in “a substantially T-shape as viewed from above” as recited in claims 2 and 27. Additionally, “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). Third, both Greil and Brandt describe locating batteries in the lower central portion of a vehicle. Ex. 1016, ¶ 38, Figure 5; Ex. 1018 ¶¶ 21– 22, Figure 1. Brandt explicitly suggests arranging batteries in a T-shape configuration. Ex. 1018 ¶¶ 21–22, Figure 1. We conclude that Petitioner has proven by a preponderance of evidence that the combination of Greil and Brandt renders claims 2, 4, and 27–31 unpatentable as obvious.” slip op. at 30
Patent outcomesUS 9,045,163 mixedClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 9,045,163 - Westerngeco, L.L.C. v. PGS Geophysical AsSome claims unpatentablePTAB · Jun 8, 2016 · IPR2015-00309 · APJ Justin Busch · IPR · Final written decision
Claims 1, 2, 6, 7, 10, 11, 16, 17, 21, and 22 are unpatentable; claims 3–5 are not shown unpatentable, and challenges to claims 18–20 are dismissed.
RulingsFinal written decision- BurdenMixed
“Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons that follow, we determine that Petitioner has shown, by a preponderance of the evidence, that claims 1, 2, 6, 7, 10, 11, 16, 17, 21, and 22 are unpatentable, but has failed to do so for claims 3–5 and 12–15. We dismiss the Petition with respect to the challenges asserted against claims 18–20.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“more than merely “selecting” times. Petitioner offers no explanation how Dr. Ikelle’s testimony that “indexed” should be construed broadly to mean “selected,” Ex. 2002, 184:8–11, would be consistent with the rest of the limitation that requires enabling separate identification of events originating from different sources. Patent Owner’s proposed construction, however, is unduly narrow to the extent it requires recording. As explained in the passage cited by Patent Owner, recording the signal and indexing are two separate aspects of the process involved in the ’981 patent. Ex. 1001, 5:62–67 (“A recording is made of the signal . . . that is indexed to a known time reference with respect to time of firing of the first source) (emphases added). The ’981 patent demonstrates that the term “indexed” is used in the “indexed” limitation according to one of its ordinary meanings that one thing is arranged in reference to another. Id.; see also id. at 6:66–7:1 (“[A] time of firing of each source with respect to a time index” is shown in Figure 4.), 8:33–40 (“[W]hen time is indexed with respect to the firing time of source A,” source B events are not coherent between firing sequences.).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Although a prior art reference may anticipate when the claim limitations not expressly found in that reference are inherent in it, inherency requires that “the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002). Here, Petitioner’s arguments and evidence fail to persuade us that de Kok disclosure of suppressing random noise inherently includes determining trace to trace coherence. Merely demonstrating a step may be done is not sufficient to show that step is inherently anticipated. Accordingly, based on the arguments and evidence submitted, we find Petitioner has failed to demonstrate, by a preponderance of the evidence, that de Kok anticipates claims 12 and 17. Similarly, because claims 13–15 ultimately depend from claim 12, we find Petitioner has failed to demonstrate, by a preponderance of the evidence, that de Kok anticipates claims 13–15.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“The relevant passages cited by both parties demonstrate that Beasley distinguishes between alternating and concurrent firings. See, e.g., Ex. 1004, 7:52–63. Although Herkenhoff states that the concurrent disclosure in Beasley means “exactly concurrently,” Patent Owner has not pointed to any clear disclosure in Beasley itself indicating “concurrently” should be understood as excluding any amount of time delay. Petitioner, however, has pointed to multiple references where Beasley explains that sources may be fired “simultaneously or nearly simultaneously.” Pet. Reply 15 (citing Ex. 1004, 8:46–47); Pet. 47 (quoting Ex. 1004, 1:19–25 (“The present invention, in certain aspects, is directed to seismic survey systems and methods in which two or more seismic sources are fired simultaneously, or significantly close together temporally . . . .”)); see also Ex. 1004, 1:47–51, 8:44–47, 9:5–10, 12:26–29. Moreover, claim 1 of the ’655 patent, which Patent Owner asserts claims the “first embodiment” of the ’981 patent, recites a method including the step of “substantially simultaneously launching a first acoustic wavefield,” from the leading source, “the first wavefield being characterized by a first unique code and launching a second acoustic wavefield” from the trailing source, “the second acoustic wavefield being characterized by a second unique code.” Ex. 2009, 6:46–53. Accordingly, Beasley does not exclude time delay encoding from its disclosed “concurrent” activation embodiments.” slip op. at 27
Patent outcomesUS 6,906,981 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 6,906,981
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.