- SAP America, Inc. v. Cyandia, Inc.InstitutedPTAB · Apr 7, 2025 · IPR2024-01433 · APJ Jason W Melvin · IPR · Institution
The Board instituted review of claims 1–7, 10, 11, 13, 18, 19, 23, 29, 35, and 36 based on the PCT publication and Austin-Lane under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Petitioner’s Sotera stipulation will eliminate the overlap between this proceeding and invalidity at the district court. Unlike the other, related IPRs for which we discretionarily deny review (e.g., IPR2024-01432, -01495, & -01496), this proceeding does not involve references that fundamentally convey the same information as may be presented as system art in the Texas litigation. In light of the stipulation and nature of the asserted ground, we conclude that this ground strongly favors institution.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We conclude that the claim language reads on Austin-Lane’s disclosure of determining “a presentation method of the notification” such as “using an instant message to the notebook computer” (Ex. 1105 ¶¶ 39, 46), in combination with teachings regarding the device to which the notification is sent and the protocol used to deliver it. We further conclude that Petitioner has provided an adequate reason that skilled artisans would have looked to Austin-Lane’s teachings and combined them with the system described in the PCT publication, as discussed. We have further reviewed the uncontested aspects of the challenge to claim 1 (Pet. 43–58) and determine that Petitioner is reasonably likely to prevail proving obviousness of claim 1. IV. CONCLUSION For the reasons discussed above, we conclude that Petitioner has shown a reasonable likelihood of prevailing with respect to unpatentability of at least one claim. Accordingly, we institute inter partes review. V. ORDER Accordingly, it is ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review of claims 1–7, 10, 11, 13, 18, 19, 23, 29, 35, and 36 of the ’948 patent is instituted on the grounds raised in the Petition; and” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of filing “would have had a bachelor’s degree in electrical engineering, computer science, or equivalent, with two or more years of experience developing and implementing graphical user interfaces for controlling server-based applications, including handling asynchronous notifications generated by those applications and web services, such as portal systems, or an equivalent amount of relevant work or research experience” and “would have been familiar with common approaches for presenting information on a graphical user interface, including various layouts for presenting multiple elements, such as icons, widgets, windows, etc.” Pet. 14–15. Petitioner describes further capabilities that such a person of ordinary skill in the art would have had. Id. at 15–16. Patent Owner asserts that a person of ordinary skill in the art at the time of filing “would have had a Bachelor’s degree in electrical engineering, computer science, or the like, and/or four or more years of experience in server-based applications” and that “[a]dditional experience may make up for a lack of education and vice versa.” Prelim. Resp. 14. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the challenged patent and prior art, we adopt it and use “skilled artisans” to refer to people with such skill at the time the invention was filed. We do not perceive a substantive distinction between the parties’ definitions, but note that Petitioner’s definition provides more detail about the capabilities of skilled artisans. Should either party believe that the definition of ordinary skill in the art affects a disputed issue in the trial, it should point out how and identify any potential dispute about the level of skill.” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“We do not agree. Petitioner notes that certain disclosures added to the April 2011 CIP application describe a “notification manager” to “determine the best alert notification method.” Pet. 27 (quoting Ex. 1110 ¶ 131; citing id. ¶¶ 90–93, 130–132, 145–147, 160). That does not mean that Petitioner construes the claim language to require determining the best method, only that disclosing a mechanism that “determine[s] the best alert notification method” provides written-description support for a requirement to “determin[e] a notification method.” Petitioner is clear in its position that the May 2009 application “does not describe how to determine a notification method or how to use ‘session data’ in the manner required by this claim limitation.” Pet. 27–28. Patent Owner asserts that the May 2009 application discloses “determining a notification method” through a channel alert server that can “determine the active devices of the subscriber . . . to provide a visual or auditory alert in the channel.” Prelim. Resp. 32 (quoting Ex. 1106 ¶ 39). That disclosure appears to address the claim language requiring an alert “based on the current state of the at least one external device indicated by the session data.” It does not, however, address the claim language “determining a notification method.” Patent Owner recognizes that Petitioner asserts disclosures in the prior art for “determining which devices to send the alert to, the protocols used to send the alert, and how alerts are presented.” Id. at 34 (emphasis omitted). But when Patent Owner asserts that the May 2009 application discloses determining how alerts are presented, it points to paragraphs that do not support the assertion. Id. at 35 (citing Ex. 1106 ¶¶ 23, 39). The first, paragraph 23, states that a “trigger may cause the information channel to change its appearance or to take other actions that may be implemented by the developer” and that “one action that may be implemented is to provide a notification to the user.” Ex. 1106 ¶ 23. Nothing about that indicates the system determines how an alert is presented. The second, paragraph 39, states that the channel alert server may “provide a visual or auditory alert in the channel” and that the “alert can appear as defined on other platforms.” Nothing about that indicates the system determines how an alert is presented. Patent Owner has not shown how the May 2009 application discloses a determining a notification method, as claimed. In Patent Owner’s view, Petitioner admits that the May 2009 application (which is the same as the asserted PCT publication) describes determining a delivery mechanism because Petitioner compares it to Austin-Lane, stating that the PCT publication “already includes a channel alert server that determines the active devices of the user and delivers an alert to the user’s device” and “discloses setting the same type of alert (stock alert) and presenting it in the same way (visually) as Austin-Lane.” Prelim. Resp. 35 (quoting Pet. 54) (emphasis omitted). But simply delivering an alert does not necessarily mean the notification method for that alert was determined. We conclude that Petitioner’s statement does not show the PCT publication discloses “determining a notification method” as claimed.” slip op. at 20
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,751,948 - Askeladden LLC v. Leigh M. RothschildAll claims unpatentablePTAB · Nov 19, 2020 · IPR2019-00855 · APJ Mitchell G Weatherly · IPR · Final written decision
The Board canceled original claims 1, 2, 11, 14–19, and 21 and denied the motion to amend because the proposed substitute claims were obvious over Karthik, Robinson, and Ortiz.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“The claim language itself implies that the financial services provider decides which biometric information is required during the enrollment stage because the Decision Limitation is added to element 17A, which is the first step in the enrollment stage recited in elements 17A–D. However, “in assessing definiteness, claims are to be read in light of the patent’s specification and prosecution history.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 908 (2014). Patent Owner identifies support for the Decision Limitation in the Specification that favors interpreting the Decision Limitation as occurring during the transaction stage (i.e., during elements 17E–G). Mot. 14–15 (citing Ex. 1001, 9:9–14). The cited portion of the Specification states: “In another embodiment, the financial service provider may have the system set up such that the server 114 queries through the point-of-sale terminal 102 and informs the merchant which biometric identification data is/are required for the desired transaction.” Ex. 1001, 9:9–14 (emphasis added). The plain language of the claim is consistent with our interpretation because it specifies that the biometric data is the data “required for the transaction,” which refers to the “transaction” recited in element 17G (describing the operation of the claimed system during a transaction stage). Based on our review of the Specification and claim language, we conclude that the Decision Limitation is sufficiently definite under 35 U.S.C. § 112, ¶ 2. Based on that review, we also interpret the Decision Limitation to require that the financial services provider informs, through the server, which type(s) of user biometric identification data must be received at the terminal (e.g., a point-of-sale terminal) to validate the transaction. E. WHETHER THE MOTION MEETS THE REQUIREMENTS OF 35 U.S.C. § 316(d) AND 37 C.F.R. § 42.121” slip op. at 14
- Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteDecided for patent owner
“The claim language itself implies that the financial services provider decides which biometric information is required during the enrollment stage because the Decision Limitation is added to element 17A, which is the first step in the enrollment stage recited in elements 17A–D. However, “in assessing definiteness, claims are to be read in light of the patent’s specification and prosecution history.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 908 (2014). Patent Owner identifies support for the Decision Limitation in the Specification that favors interpreting the Decision Limitation as occurring during the transaction stage (i.e., during elements 17E–G). Mot. 14–15 (citing Ex. 1001, 9:9–14). The cited portion of the Specification states: “In another embodiment, the financial service provider may have the system set up such that the server 114 queries through the point-of-sale terminal 102 and informs the merchant which biometric identification data is/are required for the desired transaction.” Ex. 1001, 9:9–14 (emphasis added). The plain language of the claim is consistent with our interpretation because it specifies that the biometric data is the data “required for the transaction,” which refers to the “transaction” recited in element 17G (describing the operation of the claimed system during a transaction stage). Based on our review of the Specification and claim language, we conclude that the Decision Limitation is sufficiently definite under 35 U.S.C. § 112, ¶ 2. Based on that review, we also interpret the Decision Limitation to require that the financial services provider informs, through the server, which type(s) of user biometric identification data must be received at the terminal (e.g., a point-of-sale terminal) to validate the transaction. E. WHETHER THE MOTION MEETS THE REQUIREMENTS OF 35 U.S.C. § 316(d) AND 37 C.F.R. § 42.121” slip op. at 14
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“Petitioner argues that if Patent Owner were to argue that the Decision Limitation can be met by the financial services provider deciding which biometric information is required for a transaction during the enrollment or transaction stages, then the claims would be unpatentable for lack of written description support in the Specification. Opp. 8. Petitioner concedes that the portion of the Specification relied upon by Patent Owner for support describes making the decision about what biometric information is needed during the transaction stage. Id. at 9. As explained in Part II.D above, we have narrowly interpreted the Decision Limitation to encompass only such decisions. Accordingly, Petitioner does not persuade us that the Specification fails to provide the required written description for the 7 Normally, a Patent Owner must identify material in the originally filed application leading to issuance of the patent at issue that supports the proposed amendment. Lectrosonics, Paper 15 at 7. Failing to cite the original disclosure is a basis for denying a motion to amend. Id. However, because Patent Owner appears pro se, we reviewed the original disclosure ourselves to verify that the portion of the Specification cited is identically found in that disclosure. Compare Ex. 1016 ¶ 42, with Ex. 1001, 9:9–14. Accordingly, in this case, we find that Patent Owner’s citation to the Specification functionally refers to material in the original disclosure. Decision Limitation as we have interpreted it. Additionally, we conclude that Patent Owner has established that the Specification meets the written description requirement for the Decision Limitation. F. PROPOSED SUBSTITUTE CLAIMS 1, 2, 11, 14–19, AND 21:” slip op. at 17
- ScopeDecided for patent owner
“3. Whether the Amendments Enlarge the Scope of the Claims An amendment may not enlarge the scope of the claims of the patent. 35 U.S.C. § 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii). We determine that Patent Owner’s addition of the Decision Limitation narrows the scope of every challenged claim and thus satisfies the prohibition against enlarging the scope of any claim.” slip op. at 16
Patent outcomesUS 8,799,088 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Graham · NautilusPatents in suitUS 8,799,088 - Donghee America, Inc. / Donghee Alabama, LLC v. Plastic Omnium Advanced Innovation And ResearchAll claims unpatentablePTAB · Dec 11, 2018 · IPR2017-01605 · APJ Christopher M Kaiser · IPR · Final written decision
Claims 1–3, 7, 11, 12, and 14 are unpatentable: claims 1–3, 12, and 14 are anticipated by Linden, and claims 7 and 11 are obvious over Linden and Hata.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“article whose surface has at least one empty or concave part.” Id. at 11 (citing Ex. 1001, 1:66–67; Ex. 1007 ¶ 15). Patent Owner agrees. PO Resp. 15. The ’253 patent states that “[t]he term ‘hollow body’ is understood to mean any article whose surface has at least one empty or concave part.” Ex. 1001, 1:66–67. Where an inventor defines specific terms used to describe an invention, we will give effect to those definitions, as long as they are set out “with reasonable clarity, deliberateness, and precision,” “so as to give one of ordinary skill in the art notice of the change” in meaning. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Here, the phrase “is understood to mean,” as used in the ’253 patent, signals that the inventor presents a clear, deliberate, and precise definition. Accordingly, we interpret “hollow body” as having the definition given it in the ’253 patent, “any article whose surface has at least one empty or concave part.”” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“supporting its proposed construction of “incorporate” as “insert.” First, Petitioner argues that the language of the ’253 patent requires a construction of “incorporating” as encompassing “inserting” rather than as limited to “attaching.” Reply 2–4. Both parties argue that the “incorporating” recited in the challenged claims must occur before the mold closes to form the hollow body. PO Resp. 16; Reply 2–3. We agree. Ex. 1001, 6:2–14 (“. . . after said step of incorporating, closing said mould . . .”). Thus, it is important to note the processes that the ’253 patent describes as occurring before, during, and after mold closure. Because “incorporating” must occur before mold closure, the process of “incorporating” may not be limited to any process that the patent describes as occurring during or after mold closure. Petitioner is correct that the ’253 patent describes a process in which a preassembled structure for supporting an accessory “may . . . be fastened by welding to the wall of the hollow body, upon closing the mould,” i.e., during, not before, mold closure. Ex. 1001, 4:23–30. Thus, the language of the ’253 patent does not support construing the term “incorporating” as limited to “attaching.” Petitioner also argues that both parties agreed in the related infringement suit in District Court that the proper construction of “incorporating” under the Phillips standard, used in that forum, was “inserting.” Reply 7–8 (citing Ex. 1010, at Ex. A, 4). Specifically, in that litigation, Patent Owner agreed that the correct construction of “incorporating at least one of an accessory or a duct within the hollow body” was “inserting an accessory or duct into the hollow body.” Ex. 1010, at Ex. A, 4. Here, we apply the broadest-reasonable-interpretation standard. 37 C.F.R. § 42.100(b) (2016). “The broadest reasonable interpretation of a claim term may be the same as or broader than the construction of a term under the Phillips standard. But it cannot be narrower.” Facebook, Inc. v. Pragmatus AV, LLC, 582 F. App’x 864, 869 (Fed. Cir. 2014) (non-precedential). Here, for the term “incorporating,” Patent Owner’s proposed broadest reasonable interpretation (“attaching”) is narrower than the Phillips construction Patent Owner has advanced (“inserting”). Thus, “attaching” cannot be the broadest reasonable interpretation of “incorporating.” Other than Patent Owner’s proposed “attaching” construction, the only construction the parties have proposed either in this case or in the related District Court case is Petitioner’s proposed “inserting” construction. PO Resp. 15–20 (discussing only “inserting” and “attaching” constructions); Reply 2–9 (Petitioner arguing in favor of “inserting”); Ex. 1010, at Ex. A, 4 (both parties proposing “inserting”). The ’253 patent supports such a construction, because it describes at least some of its embodiments as involving only insertion of an object between the sheets that will form the hollow body before mold closure. Ex. 1001, 4:23–30. Accordingly, for the foregoing reasons, we adopt Petitioner’s proposed construction of “incorporating” as “inserting.”” slip op. at 10
- Expert testimonyPatent owner expert discountedDecided for petitioner
“Finally, Patent Owner directs us to the testimony of Professor Tim Osswald as support for its view that “incorporate” should mean “attach.” PO Resp. 16 (citing Ex. 2001 ¶¶ 40–42). In relevant part, this testimony states that, “[a]fter reading the specification of the ’253 patent, one of ordinary skill in the art would understand and interpret the word ‘incorporating’ to mean ‘fastening’ or ‘attaching’ so that the accessory or duct becomes part of the hollow body.” Ex. 2001 ¶ 42. Professor Osswald does not cite any evidence in support of his testimony. “[C]onclusory, unsupported assertions by experts as to the definition of a claim term are not useful.” Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005) (en banc). Accordingly, we give little weight to Professor Osswald’s statement regarding the proper construction of “incorporate.” See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he [PTAB] is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations . . . .” (citations omitted)).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“preform which has at least one opening for that purpose, to be applied to the inside surface of the wall of the expanded hollow body.” Id. at 3:62–4:3. Patent Owner argues that this teaching is insufficient to disclose attaching the surge cup to the wall of the hollow body before the mold closes. PO Resp. 23–24. We agree that Linden does not teach attaching its accessory to the inside wall of the fuel tank before the mold closes around the preform. Instead, in Linden, the mold halves are closed around the preform and the mandrel, and “a suitable blowing agent . . . is introduced under pressure” through the mandrel, causing the preform to expand to press “against the inside wall defining the mold cavity,” and only then is the holding means for the accessory displaced to be brought into contact with the inner wall of the expanded preform, welding the holding means to the wall. Ex. 1003, 7:27–55, 8:11–29, Figs. 1–3. But, as discussed above, we disagree with Patent Owner about the proper construction of “incorporating” in the challenged claims. Claim 1 requires only that an accessory or a duct be “incorporat[ed] . . . within the hollow body” before mold closure occurs, and we construe “incorporating” to mean “inserting,” without requiring “attaching.” Thus, it is unimportant that Linden fails to teach attaching the surge cup to the wall before mold closure. All that is required is that Linden disclose inserting the surge cup into the preform before mold closure, and Linden does disclose this. Id. at 3:62–4:3, 7:27–49, Figs. 1–3. The next question is whether Linden discloses “after said step of incorporating, closing [the mold] in a way which eliminates any interface between said at least one of said accessory or said duct and an external atmosphere outside of the hollow body.” As discussed above, Linden discloses closing the mold halves after placing the additional body within the preform. But Linden discloses that “[a]t its lower end the preform 28 is pressed around the mandrel 14 by virtue of closure of the mold halves 10a and 10b.” Id. at 7:40–42, Fig. 2. Because mandrel 14 is hollow, id. at 6:35–39; 6:46–54, it is not completely clear that closure of Linden’s hollow body around mandrel 14 necessarily eliminates any interface between the additional body inside Linden’s hollow body and the atmosphere outside the hollow body. On the other hand, the closure of the mold described in the ’253 patent occurs with blowing nozzle 6 “positioned between the two parts of the [mold],” and “blowing air is injected under pressure via the nozzle,” which is quite similar to the use of hollow mandrel 14 in Linden. Ex. 1001, 5:50–57. Given the similarity between Linden’s method and the method described in the ’253 patent, we determine that Petitioner has shown by a preponderance of the evidence that Linden discloses the limitation of claim 1 requiring the step of, “after said step of incorporating, closing [the mold] in a way which eliminates any interface between said at least one of said accessory or said duct and an external atmosphere outside of the hollow body.” The final question with respect to claim 1 is whether Linden discloses that the additional body incorporated within the hollow body “is supported by a preassembled structure which comprises at least one device configured to anchor said preassembled structure to an internal wall of the hollow body.” Petitioner argues that Linden’s “[h]olding means 24 is a preassembled structure” in which “leg members 44, 45” have “enlarged foot portion[s] 36.” Pet. 18 (citing Ex. 1003, 9:23–34). We agree. “[H]olding means 24 . . . substantially comprises first and second support or leg members 44, 45,” and “support or leg members 44, 45 are each provided with an enlarged foot portion 36 of substantially plate-like configuration.” Ex. 1003, 9:23–34. Even if Linden’s holding means 24 were not in the aggregate the recited “preassembled structure,” each leg member 44, 45, taken together with its respective foot portion 36 is. Ex. 1001, 4:26–28 (describing a “preassembled structure” as “for example, an arm provided with a tab for fastening to the wall of the hollow body”). Linden’s “foot portions 36 are pressed against the inside surface, which is still hot and thus plastic, . . . of the hollow body . . . thereby to produce a welded joint between the foot portions 36 and the inside surface.” Id. at 9:34–42. Petitioner has shown by a preponderance of the evidence that Linden discloses the limitation of claim 1 requiring that the accessory or duct be “supported by a preassembled structure which comprises at least one device configured to anchor said preassembled structure to an internal wall of the hollow body.”” slip op. at 19
Patent outcomesUS 7,166,253 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 7,166,253 - 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
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.