• Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures I LLCNo claims unpatentable
  PTAB · Oct 22, 2015 · IPR2014-00963 · APJ David C Mckone · IPR · Final written decision

  Claims 1–16 were not shown unpatentable because the ’480 patent did not disclose frequency hopping and the proposed obviousness combination lacked a reasonable expectation of success.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “In the Decision to Institute, in light of an agreement between the parties, we preliminarily determined that “broadband transceiver,” recited in claim 1, means “a transceiver that covers a substantial portion of the bandwidth available to the wireless service provider who is operating the basestation,” with the clarification that such a transceiver does not include a set of single-frequency transceivers. Dec. 10. Neither party contests this construction. On the complete record, we maintain this construction. We further determined that no other claim term required express construction. Dec. 10. Neither party proposes a construction of any other term and we find it unnecessary to construe any other term to resolve the dispute between the parties.” slip op. at 8

  • Skill levelSkill level board ownDecided for petitioner

    “1. Level of Skill in the Art Petitioner contends that a person of ordinary skill in the art would have had at least a B.S. degree in Electrical Engineering, Computer Engineering, or the like, and at least three years of additional academic or industry experience. Pet. 11 (citing Ex. 1003 (Stark Decl.) ¶ 45). Dr. Wells “generally agree[s] with Dr. Stark in paragraph 45 of his declaration.” Ex. 2007 ¶ 20. We adopt the parties agreed statement of the level of skill of a person of ordinary skill in the art.” slip op. at 21

  • Expert testimonyPetitioner expert discountedMixed

    “Dr. Stark’s testimony also is not supported by the description in the ’480 patent. In one example, Dr. Stark testifies that: For the case of the receiver side (dehopping) as shown is Fig. 3, the same logical channel would “hop” onto different RF channels each successive GSM TDMA frame. This would mean that for a particular TDMA frame, a given logical channel, e.g., channel 1 on slot 1, would be at a particular RF channel such as indicated by location “27” in the table in Fig. 3. But in the next TDMA frame, the same logical channel, would be placed onto a different RF channel, e.g., location “2” in the table in Fig. 3. By the controller supplying a new mapping signal (table) every TDMA frame, the samples from the correct RF channel for the associated logical channel could be placed onto the TDM bus for processing by the corresponding DSP 18. Ex. 1022 ¶ 17. This is inconsistent with the description in the ’480 patent. Locations “27” and “2” in DP RAM Enable 202 merely indicate whether data can be asserted into time slots 27 and 2. Ex. 1006, 9:46–10:3. Changing the mapping in DP RAM Enable 202 to enable slot “2” and disable slot “27,” without additional changes elsewhere in the system, would not result in different RF channels being switched to the same logical channel. In this example, and the others cited above, Dr. Stark repeatedly testifies that simply re-programming DP RAM Enable 202 will change the mapping of physical RF channels and logical channels. Nevertheless, as Patent Owner argues (PO Resp. 26–27), the ’480 patent does not support that testimony. Because Dr. Stark’s testimony is inconsistent with the description in the ’480 patent, we give his testimony little weight.5” slip op. at 28

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “(Ex. 1006, 5:4–17) describes a basestation’s exchange of RF signals with mobile subscriber terminals. Specifically, the passage is directed to the modulation of voice and data channels over RF carrier signals: “The RF carrier signals are modulated with voice and/or data (channel) signals which are to be coupled to the public switched telephone network (PSTN) by the basestation 10.” Ex. 1006, 5:6–9 (emphasis added). In that context, the ’480 patent explains that “[t]he particular modulation in use[] may be any one of a number of different wireless (air interface) standards such as the well known Advanced Mobile Phone Service (AMPS), time division multiple access (TDMA) such as IS-54B, code division multiple access (CDMA) such as IS-95, frequency hopping standards such as the European Groupe Speciale Mobile (GSM).” Id. at 5:9–17 (emphases added). We find that this passage states, at most, that the system described in the ’480 patent supports the modulation specified by the GSM standard. Petitioner admitted at the hearing that frequency hopping is not a modulation scheme and that GSM specifies the same modulation scheme whether or not frequency hopping is used. Tr. 62:17–63:23. The passage of column 5, lines 9–17, of the ’480 patent is consistent with the system of the ’480 patent being programmed to support the modulation scheme of GSM, without supporting the optional frequency hopping functionality. While GSM is referred to as a “frequency hopping standard[],” the frequency hopping functionality is inapposite to the modulation being discussed in the passage. Tr. 63:17–22 (“JUDGE McKONE: And you can use the same modulation regardless of whether you are using frequency hopping or not, is that right? MR. SPEARS: Exactly. Yeah, it’s the same slot. It’s the same framing. It’s the same TDMA frames. It is all the same.”). We find that the ’480 patent does not state, explicitly or implicitly, that the described system implements the optional frequency hopping functionality of GSM. We recognize that Dr. Stark testifies that “a [person of ordinary skill in the art] would have understood that explicit reference to GSM to include reference to the constituent part of the GSM standard that specifies frequency hopping, i.e., GSM 05.02, and thus a [person of ordinary skill in the art] would understand that the ʼ480 Patent discloses this limitation as described below.” Ex. 1003 ¶ 90. Dr. Stark’s testimony, however, relies on his assumption that frequency hopping is a type of modulation. Id. As noted above, Petitioner has conceded that frequency hopping is not a type of modulation. Accordingly, we do not credit Dr. Stark’s testimony on this point. At the hearing, Petitioner argued that “there is no reason to say you are doing frequency hopping unless you are frequency hopping.” Tr. 63:22– 23. We are not persuaded. The ’480 patent does not state that its system is “doing frequency hopping.” Rather, it characterizes GSM as a “frequency hopping standard[].” While this characterization may be relevant to obviousness (discussed below), it is not a statement explicitly showing that the system of the ’480 patent implements frequency hopping.” slip op. at 17

  Patent outcomesUS 6,952,408 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 6,952,408
• Seoul Semiconductor Co., Ltd / North America Seoul Semiconductor Inc. v. Sharp Kabushiki KaishaAll claims unpatentable
  PTAB · Oct 15, 2015 · IPR2014-00879 · APJ Jeremy M Plenzler · IPR · Final written decision

  Claims 1–3 and 5–7 are unpatentable: claims 1, 3, and 7 are anticipated by Yoon; claims 2–3 and 5–6 are obvious over the listed combinations.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Patent Owner has not articulated a persuasive reason for giving Dr. Sasian’s Declaration, as a whole, little or no weight in our analysis. It is generally understood that some attorney involvement in the preparation of an expert report or declaration is permissible as long as the expert substantially participated in the preparation thereof, such that it cannot be considered to be “ghost written” by an attorney. See Manning v. Crockett, No. 95C3117, 1999 WL 342715, at *3 (N.D. Ill. May 18, 1999); see also Trigon Ins. Co. v. United States, 204 F.R.D. 277, 293 (E.D. Va. 2001) (discussing the decision in Manning). Patent Owner has not demonstrated persuasively that Dr. Sasian’s declaration was “ghost written.” Long Term Capital Holdings v. United States, No. 01-CV-1290, 2003 WL 21269586, at *4 (D. Conn. May 6, 2003). We may determine the appropriate weight to be accorded the evidence presented, including expert opinion, based on the disclosure of the underlying facts or data, upon which that opinion is based. Thus, we decline to make a determination about Dr. Sasian’s opinion, as a whole. Rather, in our analysis, we consider, as they arise, relevant portions of Dr. Sasian’s testimony and determine the appropriate weight to accord that particular testimony.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed

    “the broadest reasonable interpretation in light of the ’679 patent Specification. See 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–80 (Fed. Cir. 2015) (“Congress implicitly approved the broadest reasonable interpretation standard in enacting the AIA,” and “the standard was properly adopted by PTO regulation.”). Applying that standard, we interpret the claim terms of the ’679 patent according to their ordinary and customary meaning in the context of the patent’s written description. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The only limitation construed expressly in our Decision to Institute is “A2<1/√nଶെ1, where n is a refraction index of a material forming the light flux controlling member; and A2=ΔR2/(R2Δα2), where ΔR2 is an increment of R2 and Δα2 is an increment of α2.” Dec. 7. Neither party disputes that construction, nor are we apprised of any other reason to change our construction of that limitation. We determine that no other term requires an express construction in order to conduct properly our analysis of the applied art.” slip op. at 9

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

    “Drawings and pictures can anticipate claims if they clearly show the structure which is claimed. See Mraz, 455 F.2d at 1072. When the reference is a utility patent, it does not matter that the feature shown is unintended or unexplained in the specification. The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art. Aslanian, 590 F.2d at 914 (“a drawing in a utility patent can be cited against the claims of a utility patent application even though the feature shown in the drawing was unintended or unexplained in the specification of the reference”). Regardless of the language used in paragraph 165 of Yoon, there is no dispute that Figure 14 of Yoon discloses curved central surface 16 as being concave when viewed from light emitting chip 15 (i.e., extending into Yoon’s base 14, similar to the ’679 patent’s light-incoming surface extending into bottom surface 2c). See Tr. 26:18–20 (At oral hearing, Patent Owner’s counsel agreed that “figure [14] shows a concave curve for 16 . . . 16 is definitely concave.”). Moreover, we are persuaded that the additional description of Yoon’s” slip op. at 13

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Based on our review of the argument and evidence supporting Petitioner’s challenge to claims 2 and 3 (see Pet. 32–36 (citing, e.g., Ex. 1006, 5–6, 13–15, Figs. 1, 4; Ex. 1002 ¶ 65)), we are persuaded that Petitioner has established, by a preponderance of the evidence, that the subject matter of those claims would have been obvious over the combination of Yoon and Wanninger.” slip op. at 18

  Patent outcomesUS 7,798,679 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,798,679
• Seoul Semiconductor Co., Ltd / North America Seoul Semiconductor Inc. v. Enplas CorporationAll claims unpatentable
  PTAB · Oct 15, 2015 · IPR2014-00878 · APJ Jeremy M Plenzler · IPR · Final written decision

  Claims 1, 2, 5–7, and 10–12 are unpatentable as obvious over the instituted combinations of Tetsuo with Kim or Blieske, with Yamaguchi for claims 10 and 11.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “lexicographical definition for the “light control/emission surface,” and, instead, “merely describes an embodiment of a light control/emission surface.” Pet. Reply 2. Petitioner proposes that we construe this term in the manner stated in our Decision to Institute (Pet. Reply 4 (citing Dec. 7)), where we construed the term “as only requiring a ‘surface that controls a traveling direction of light emitted from the light emitting element’” (Dec. 7). We agree with Petitioner. Patent Owner has failed to persuade us that the cited portions of the Specification of the ’969 patent provide a definition of this term with reasonable clarity, deliberateness, and precision. Although the Specification of the ’969 patent provides the example of light control/emission surface 11 including first, second, and third emission surfaces 11a, 11b, 11c (Ex. 1001, 7:20–42), Patent Owner fails to identify anything in the Specification indicating that these three emission surfaces are required for the claimed “light control/emission surface.” The initial discussion of light controlling emission surface 11 states that “light controlling emission surface 11” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “to arrange optical elements on the back of a light flux controlling member. Id. at 33 (citing Ex. 1003 ¶¶ 32–33). Petitioner contends that one skilled in the art would have needed to select an arrangement for Tetsuo’s refraction parts, and would have considered the grid pattern taught by Kim to be one obvious option. Id. Petitioner reasons, for example, that it would have been obvious to one skilled in the art to use a grid pattern to arrange the refraction parts on the back of Tetsuo’s light flux controlling member because “Kim also identifies specific benefits from providing a grid of horizontal and perpendicular grooves between optical elements on the light incoming side of a lens” including “uniform output brightness from the light flux controlling member,” which would have been beneficial to the arrangement in Tetsuo. Id. at 33–34 (citing Ex. 1005, 2:35–37; Ex. 1004 ¶¶ 6–7).” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “Patent Owner responds with general allegations of “teaching away” and “impermissible hindsight,” but does not explain persuasively why one skilled in the art would have been discouraged from the proposed modification or why it was based solely on the disclosure of the ’969 patent. PO Resp. 27–30. For example, Patent Owner alleges, generally, that “Petitioners’ position requires one of skill in the art to ‘disassemble the single lens of Kim’ at the point of novelty of the Claims, to provide a surface taught away from by Tetsuo, which employs a different type of surface.” Id. at 28.” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner

    “Patent Owner responds with general allegations of “teaching away” and “impermissible hindsight,” but does not explain persuasively why one skilled in the art would have been discouraged from the proposed modification or why it was based solely on the disclosure of the ’969 patent. PO Resp. 27–30. For example, Patent Owner alleges, generally, that “Petitioners’ position requires one of skill in the art to ‘disassemble the single lens of Kim’ at the point of novelty of the Claims, to provide a surface taught away from by Tetsuo, which employs a different type of surface.” Id. at 28.” slip op. at 15

  Patent outcomesUS 8,227,969 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,227,969
• Edmund Optics, Inc. v. Semrock, Inc.No claims unpatentable
  PTAB · Sep 16, 2015 · IPR2014-00599 · APJ William A Capp · IPR · Final written decision

  Claims 33–36, 39–41, 44, and 45 were not shown unpatentable: MacLeod did not enable claim 33 for anticipation, and Edmund did not establish obviousness over MacLeod.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “After considering claim 33 in view of the specification, as a whole, we are not persuaded that the intrinsic record requires a departure from the plain and ordinary meaning of “multi-layer, thin-film, laser-line filters.” The standard for finding claim scope disavowal is exacting. See GE Lighting Solutions, LLC v. Agilight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014). It is not enough that the only embodiments, or all of the embodiments, contain a particular limitation. See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012). Mere criticism of a particular embodiment encompassed in the plain meaning of a claim term is not sufficient to rise to the level of clear disavowal. See Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009). Furthermore, even where a particular structure makes it “particularly difficult” to obtain certain benefits of the claimed invention, this does not rise to the level of disavowal of the structure. See Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., 620 F.3d 1305, 1315 (Fed. Cir. 2010). It is the claims that define the metes and bounds of the patentee’s invention. See Phillips, 415 F.3d at 1313. Thus, the patentee is free to choose a broad term and expect to obtain the full scope of its plain and ordinary meaning unless the patentee explicitly redefines the term or disavows its full scope. See Thorner, 669 F.3d at 1366. Each claim does not need to cover every feature disclosed in a specification. See Ventana Med. Sys., Inc. v. Biogenex Labs, Inc., 473 F.3d 1173, 1182 (Fed. Cir. 2006). When a claim addresses only some of the features disclosed in the specification, it is improper to limit the claim to other, unclaimed features.” slip op. at 14

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached

    “The MacLeod Treatise is a non-patent, printed publication. Edmund relies on In re Antor Media Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012), for the proposition that a non-patent, printed publication is presumptively enabled for purposes of an anticipation analysis. Paper 69, 1. Semrock distinguishes Antor Media as being restricted to the context of patent prosecution. Paper 68, 3. The Court, in Antor Media, explained the underlying rationale for permitting a presumption of enablement during patent prosecution. [A]n examiner, who has no access to experts or laboratories, is not in a position to test each piece of prior art for enablement in citing it, and requiring him to do so would be onerous, if not impossible. An examiner, therefore, is not required to anticipate every possible response to a rejection, including showing that a cited reference is enabling. Consistent with the statutory frame-work and our precedent, we therefore hold that, during patent prosecution, an examiner is entitled to reject claims as anticipated by a prior art publication or patent without conducting an inquiry into whether or not that prior art reference is enabling. As long as an examiner makes a proper prima facie case of anticipation by giving adequate notice under § 132, the burden shifts to the applicant to submit rebuttal evidence of nonenablement. Antor Media, 689 F.3d at 1289. In the case of Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313 (Fed. Cir. 2003), the Federal Circuit held that an accused infringer should be entitled to have a district court presume the enablement of unclaimed material in a prior art patent asserted against a patentee. Id. at 1355. In dicta, the Amgen Court stated that its reasoning “might” also apply to prior art printed publications. We note that by logical extension, our reasoning here might also apply to prior art printed publications as well, but as Sugimoto is a patent we need not and do not so decide today. See id. (emphasis added). Thus, the Amgen Court did not reach that issue in its decision. See id. District Courts are split on this issue. We note that at least one district court decision has held that a district court should presume that a prior art printed publication is enabled. See Robocast, Inc. v. Apple Inc., 39 F. Supp. 3d 552, 565 (D. Del. 2014). Other district courts maintain otherwise. See e.g., CA, Inc. v. Simple.com., Inc., 780 F. Supp. 2d 196, 250 (E.D.N.Y. 2009); Matsushita Elec. Indus. Co. v. Samsung Electronics Co., 2006 WL 1794768, *5 (D.N.J. June 26, 2006).” slip op. at 21

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “G. Ultimate Determination of Enablement A patent claim “cannot be anticipated by a prior art reference if the allegedly anticipatory [disclosure] cited as prior art [is] not enabled.” In re NTP, Inc., 654 F.3d 1279, 1301 (Fed. Cir. 2011). Although anticipation is a question of fact, whether a prior art reference is enabling is a question of law with underlying factual inquiries. Id. The standard for what constitutes proper enablement of a prior art reference for purposes of anticipation under section 102 differs from the enablement standard for a patent application under section 112. See Verizon Services Corp., v. Cox Fibernet Virginia, Inc., 602 F.3d 1325, 1337 (Fed. Cir. 2010). Anticipation does not require the actual creation or reduction to practice of the prior art subject matter; anticipation requires only an enabling disclosure. See Schering Corp., v. Geneva Pharma, Inc., 339 F.3d 1373, 1380 (Fed. Cir. 2003); citing In re Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985). Nevertheless, we determine that the MacLeod Treatise does not enable claim 33. Claim 33 is directed to optical performance parameters. There is no dispute that multi-layer, thin-film, laser-line filters comprised of alternating layers of ZnS and Cryolite were known in the prior art. Thus, Semrock distinguishes its invention over prior art soft-coated filters on the basis of optical performance, not on the basis of using the basic structure of alternating layers of refractive materials with Fabry-Perot cavities. Upon consideration of the various Wands factors, including the absence of any working examples that demonstrate that Edmund’s theoretical calculations are capable of realization, we conclude that Semrock has carried its burden of showing that the MacLeod Treatise does not enable claim 33.” slip op. at 32

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentable

    “By waiting and filing its expert declaration after Semrock filed its Patent Owner Response, Edmund effectively precluded Semrock from addressing Professor MacLeod’s Exhibit 1029 declaration in its Response. This also effectively precluded Semrock’s expert, Dr. Rancourt, from responding to Professor MacLeod’s belated testimony in his declaration that was filed in support of Semrock’s Response. We will not countenance such tactics. See Murphy v. Village of Hoffman Estates, 1999 U.S. Dist. LEXIS 3320, at *5–6 (N.D. Ill. 1999) (“[I]t is established beyond peradventure that it is improper to sandbag one’s opponent by raising new matter in reply.”). A Reply that belatedly presents evidence will not be considered. Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,767. Edmund’s original Petition asserted a ground of unpatentability over the ZnS/Cryolite of Figure 7.26 of the MacLeod Treatise. If Edmund wanted to present a ground of unpatentability over the ZnS/Cryolite embodiment of Figure 7.26 in combination with a tantala/silica embodiment, Edmund should have presented evidence as to how and why a person of ordinary skill in the art would have combined the two embodiments to achieve the invention of claim 33 contemporaneous with the filing of its original Petition. See KSR, 550 U.S. at 418 (requiring articulated reasoning with rationale underpinning as to how or why a person of ordinary skill in the art would have combined or modified the teachings of the prior art). Presenting such evidence and argument for the first time in a Reply is untimely.” slip op. at 43

  Patent outcomesUS 7,119,960 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,119,960
• Edmund Optics, Inc. v. Semrock, Inc.No claims unpatentable
  PTAB · Sep 9, 2015 · IPR2014-00583 · APJ William A Capp · IPR · Final written decision

  Claim 1 was not shown unpatentable because Starke does not disclose the expected deposition time for an entire layer required by the Board’s construction.

  RulingsFinal written decision

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

    “From this disclosure, we conclude that the ti referred to in line 10 of column 10 is the same ti referred to in connection with layers that are not optically monitored. If, as Edmund contends, ti represents an estimated remaining time until deposition is terminated and is calculated repeatedly and intermittently reset during deposition, the time represented by ti becomes a moving target and the time represented by 95% of ti becomes increasingly smaller until it approaches and becomes essentially equal to the “new deposition time” identified in line 11 as the time difference between a hypothetical continually recalculated ti and a “new deposition time” approaches zero. See Ex. 1001, 10:11. We think the better interpretation is that the ti identified in line 11 is a different and distinct time from the “new deposition duration” identified later in the same line of the specification. In other words, for optically monitored layers, ti is calculated one time at or before commencement of deposition of an optically monitored layer. Another time, represented by 95% of ti is then calculated one time such that it becomes a fixed moment in time for initiation of a calculation of a “new deposition duration.” Thus, based on our review of the specification, the term “expected deposition time ti” has the same meaning for layers that are optically monitored and layers that are not optically monitored. In view of the foregoing, we construe “expected deposition time ti of the layer” to mean a time based upon the designed (“theoretical”) thickness di and deposition rate ri where the designed thickness di represents the thickness of an entire layer, not a portion thereof. 2. “measuring during deposition for a period less than ti, a measured” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Edmund’s position on whether Starke calculates an “expected deposition time ti” is predicated on the Board adopting Edmund’s proposed claim construction. We do not adopt that construction. Starke’s system depends on taking optical monitoring transmission measurements after deposition has commenced. Edmund fails to identify any disclosure in Starke that a data processor calculates an expected deposition time ti based on the design thickness of an entire layer. Thus, Starke does not satisfy the limitation directed to calculating an “expected deposition time ti” as we have construed that limitation. “Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983). Inasmuch as Starke fails to disclose all elements of claim 1, we find that Edmund has failed to establish, by a preponderance of the evidence, that Starke anticipates claim 1.” slip op. at 16

  • Expert testimonyPetitioner expert discountedPatent owner expert discountedOther

    “At the outset, we have considered the claim construction testimony of both Patent Owner’s Declarant, Dr. Rancourt, and Petitioner’s Declarant, Professor MacLeod. We note, however, that “conclusory, unsupported assertions by experts as to the definition of a claim term are not useful to a court.” Phillips, 415 F.3d at 1318.2 In the instant case, the experts’ testimony does little more than repeat, without citation to additional evidence, the conclusory arguments of their respective counsel. Thus, we focus primarily on the intrinsic record to construe the term at issue. Id. (“extrinsic evidence in general is less reliable than the patent and its prosecution history in determining how to read claim terms”).” slip op. at 7

  • ExcludeMotion to exclude, deniedDenied

    “its own expert, Professor MacLeod, in a different, but related, inter partes review. Edmund argues that it is improper to take cross-examination testimony obtained in one case and then use it another case. Edmund also argues that the cross-examination exceeds the scope of direction examination. Paper 45. The testimony in question goes to an issue of claim construction. We have previously explained that our claim construction in this case is based primarily on the intrinsic record and that the parties’ proffered expert testimony is neither needed nor helpful in assisting our claim construction efforts.3 Nevertheless, we DENY Edmund’s motion to exclude Professor MacLeod’s Exhibit 2008 deposition testimony, but afford the testimony little weight.” slip op. at 17

  Patent outcomesUS 7,068,430 not shown unpatentable
  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 7,068,430
• Greene’S Energy Group, LLC v. Oil States Energy Services, LLCAll claims unpatentable
  PTAB · May 1, 2015 · IPR2014-00216 · APJ James A Tartal · IPR · Final written decision

  Claims 1 and 22 are unpatentable as anticipated by Dallas ’118; the motion to amend with substitute claims 28 and 29 is denied.

  RulingsFinal written decision

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

    “member for connection to a wellhead of the well, and a locking member for detachably engaging the base member. Claim 22 contains a similar requirement. We agree with Petitioner that bottom flange 22 of Dallas ’118 corresponds to the base member of a first lockdown mechanism, and that bolts through the bores in lower flange 22 correspond to a locking member, as claimed in the ’053 patent. See Pet. 42. Claim 1 further requires a second lockdown mechanism having a range of adjustment adequate to ensure that the mandrel can be moved into the operative position, and locked down in the operative position while the first lockdown mechanism is in the lockdown position. Claim 22 contains a similar requirement. We agree with Petitioner that the hydraulic cylinder mechanism of Dallas ’118, which ensures a fluid tight seal between annular seal 78 and bit guide 84 by maintaining a pressure of about 1000 psi in upper chamber 36, corresponds to the recited second lockdown mechanism. See Pet. 36, 44.” slip op. at 18

  • 112 supportMotion to amend, deniedDenied

    “The determination of whether there is written description support turns on 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). The proposed substitute claims introduce the term “wellhead assembly,” a term that does not appear in the ’418 application or the ’053 patent. Patent Owner’s string citation to various disclosures, none of which identify a “wellhead assembly,” is insufficient to demonstrate written description support absent some explanation. The same is true with regard to the proposed addition of language requiring both an apparatus for securing the mandrel “within a tubing head spool of a wellhead assembly” and a setting tool “arranged to insert a bottom end of the mandrel through the wellhead.” A string citation does not explain how the original disclosure of the application relied upon reasonably conveys to a person the features intended to be encompassed by the proposed substitute claims. In particular, we cannot discern from Patent Owner’s conclusory discussion how the original disclosure describes both securing the mandrel within the wellhead assembly and inserting the mandrel through the wellhead, particularly where Patent Owner further argues a distinction between inserting a mandrel “into” a wellhead as opposed to “through” a wellhead. See PO Reply. 1–2. Accordingly, we conclude Patent Owner has not satisfied its burden of showing written description support for the proposed substitute claims 28 and 29.” slip op. at 26

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

    “patentable distinction of each proposed substitute claim over the prior art. See 37 C.F.R. § 42.20(c). This includes providing a construction of new claim terms sufficient to support the distinction of the proposed substitute claim over the prior art. Patent Owner introduces the new claim terms “wellhead assembly” and “setting tool” in the proposed substitute claims, but provides no express construction of either term. Absent any discussion of what is encompassed by the recited “wellhead assembly,” it is unclear how the term differs from the use of “wellhead,” alone, elsewhere in the claim. This is particularly problematic, as discussed above, when attempting to discern what is claimed as a setting tool “arranged to insert a bottom end of the mandrel through the wellhead,” relative to the claimed apparatus for securing a mandrel “above the casing of the well and within a tubing head spool of a wellhead assembly.” In its Motion to Amend, Patent Owner also does not provide a construction for “setting tool.” We note that Patent Owner was aware that the district court had previously suggested the term “setting tool” was “ambiguous.” District Court Markman Order, Ex. 2008, 15. In reply to Petitioner’s opposition to the Motion, Patent Owner argues that “the defining characteristics of the ‘setting tool’” are set out in the claim language as: (1) “arranged to insert a bottom end of the mandrel through the wellhead,” and, (2) “separate from” the first and second lockdown mechanisms and thus “removable.” PO Reply 1. Patent Owner proceeds to dispute the construction of “setting tool” proposed by Petitioner’s Declarant, Mr. Perkin, but fails to offer any express construction of the term itself. Petitioner’s Declarant, Mr. Perkin, defined “setting tool” as “any device that is used to align the mandrel with the wellhead so that the mandrel can be inserted without interference.” Perkin Decl., Ex. 1014 ¶ 44. Patent Owner’s Declarant, Mr. Wooley, testified that “setting tool” is “usually the name given to a device for inserting some sort of tool.” Ex. 1011, 61:17–21. Absent a clear explanation of what is claimed, Patent Owner’s assertion that a particular reference does not teach “any kind of setting tool” is conclusory and not persuasive. See Mot. 9. Patent Owner has not provided a sufficient construction of the term “setting tool” by merely pointing to other claim language or by disputing Petitioner’s proposed construction. By failing to articulate adequately a construction of “setting tool” or “wellhead assembly,” Patent Owner has not satisfied its burden of showing a patentable distinction of each proposed substitute claim over the prior art. 3. Conclusion We conclude Patent Owner has not come forward with sufficient evidence to establish proposed substitute claims 28 and 29 have adequate written description support. We further conclude Patent Owner has not supported sufficiently the distinction of the proposed substitute claims 28 and 29 over the prior art by failing to provide adequately the necessary construction of the proposed amendments to claims 1 and 22. For these reasons, we deny Patent Owner’s Motion to Amend.” slip op. at 27

  Patent outcomesUS 6,179,053 unpatentable
  § 102 anticipation
  Patents in suitUS 6,179,053
• Greene’S Energy Group, LLC v. Oil States Energy Services, LLCNo claims unpatentable
  PTAB · May 1, 2015 · IPR2014-00364 · APJ William A Capp · IPR · Final written decision

  The Board found claims 1–13, 27, and 30–32 not shown unpatentable because the proposed obviousness combinations did not establish the claimed mechanical lockdown mechanism and its required function.

  RulingsFinal written decision

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

    “The parties do not dispute that a “lockdown mechanism” maintains the mandrel in a fixed position during a fracking or well treatment operation. Thus, we will construe “lockdown mechanism” to mean “machinery for maintaining [the mandrel] in a fixed position during a fracking or well treatment operation.” This leaves us to determine what it means for a lockdown mechanism to be “mechanical” and whether the correct construction requires imposing a further definitional limitation regarding a range of adjustment. Oil States points out that the Specification differentiates a mechanical mechanism from hydraulic mechanisms. PO Resp. 12. The Specification distinguishes the instant invention from an earlier invention by the same inventor that discloses a hydraulic unit. Ex. 1001, 2:28–63. The Specification further states that: a mechanical lockdown mechanism for securing the BOP protector mandrel in an operative position is considered more reliable because a source of pressurized hydraulic fluid is not required. Id. at 2:3–6; see also id. at 3:53–56. Greene does not challenge that this language in the Specification effectively differentiates a mechanical lockdown mechanism from a hydraulic mechanism. Thus, we construe “mechanical” lockdown mechanisms as being limited to purely mechanical means such as nuts and bolts and the like. We further clarify that the principal holding force that maintains the mandrel in a fixed position is not a dynamic force such as through hydraulic, pneumatic, or electrical means or the like.” slip op. at 8

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

    “Oil States’s effort to read a “broad range of adjustment” limitation into the definition of mechanical lockdown mechanism in claim 1 renders the dependent limitation in claim 3 superfluous. Claim 2 claims an elongated spiral thread. There is no need to add a further limitation to claim 3 to provide for adjustment to compensate for variations in the distance between a top of the blowout preventer and the top of the casing of different wellheads if a “broad range of adjustment” is already contemplated in the meaning of mechanical lockdown mechanism. 8 It is well-settled that each claim does not necessarily cover every feature disclosed in the specification. See Ventana Med. Sys., Inc. v. Biogenex Labs, Inc., 473 F.3d 1173, 1181 (Fed. Cir. 2006). When a claim addresses only some of the features disclosed in the specification, it is improper to limit the claim to other unclaimed features. Id. Here, Oil States’s inclusion of adjustment limitations in claims 2 and 3 belie an intention to limit the scope of the term “mechanical lockdown mechanism” in claim 1 to mechanisms that provide a broad range of adjustment.9 Thus, we decline to adopt Oil States’s proposed construction. We construe a “lockdown mechanism” to mean “machinery for maintaining [the mandrel] in a fixed position.” In the context of lockdown mechanisms, we construe the adjective “mechanical” to mean that the lockdown mechanism is limited to purely mechanical means such as nuts and bolts and the like so that the principal holding force that maintains the mandrel in a fixed position 8 In the Summary of the Invention section of the Specification, the topic sentence of the paragraph describing an embodiment with a “significant range of adjustment,” qualifies the description of such embodiment with the word “preferably.” Ex. 1001, 3:8–27. This suggests that this passage of the Specification merely describes one embodiment and not the entire invention. 9 To the extent that claim 1 requires the mechanical lockdown mechanism to have any range of adjustment, such adjustment requirement may be found in the claim limitation directed to the lockdown mechanism being “adapted to ensure that the annular sealing body is securely seated against the top of the casing when the mandrel is in the operative position” and not in definition of “mechanical lockdown mechanism” per se.” slip op. at 11

  • Skill levelSkill level board ownOther

    “Green’s expert, Mr. Shackelford, opines that the person of ordinary skill in the art at the time of the invention of the ’993 patent would have had a Bachelor-level degree in a recognized engineering discipline and practical job exposure of several years with oil and gas well operations. Ex. 1002 ¶ 13. Mr. Shackelford’s testimony is entirely conclusory with no supporting factual analysis. Oil States contends that the level of ordinary skill in the art is “relatively low,” but does not articulate or explain what it means by this characterization. PO Resp. 22. Oil States’s expert, Dr. Wooley, merely adopts Mr. Shackelford’s position and, like Mr. Shackelford, fails to provide any supporting factual analysis. Merely reciting a college degree and a number of years of experience provides little guidance as to the actual capabilities of a person of ordinary skill in the art. Neither party presents a detailed evidentiary showing under the factors recited in Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). 13” slip op. at 22

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “combine references is a question of fact. In re Constr. Equip. Co., 665 F.3d 1254, 1255 (Fed. Cir. 2011). Greene fails to persuade us that a person of ordinary skill in the art would have had reason to combine Herricks and McLeod to achieve the invention claimed in claims 1 and 27 of the ’993 patent. Because the mechanical lockdown mechanism in McLeod is intended to be used with a mandrel that packs off at an indeterminate point in the casing, rather than at a fixed point and, therefore, does not disclose any range of adjustment to accommodate production trees of varying heights as would be necessary to be operable in systems designed for fixed point packoff, the proposed combination does not provide a mechanical lockdown mechanism that is adapted to securely seat a mandrel against the top of the casing as required by claim 1. Similarly, the proposed combination does not provide a method for engaging the mechanical lockdown mechanisms to lock the mandrel in the operative position such that the annular sealing body is in fluid sealing engagement with a top of a casing of the well as required by claim 27.” slip op. at 30

  Patent outcomesUS 6,289,993 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,289,993
• Medtronic, Inc. / Medtronic Vascular, Inc. v. Lifeport Sciences LLCNo claims unpatentable
  PTAB · Apr 21, 2015 · IPR2014-00288 · APJ Robert A Pollock · IPR · Final written decision

  Claims 1–5, 7–13, 15, and 16 were not shown unpatentable because the cited references did not establish the claimed permanent curve.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther

    “Considering the teachings of the Specification, we conclude that the curve element must be permanent, as recited in the claims, rather than “resiliently flexible.” The Specification teaches that in some embodiments, the hook or protrusion “is resiliently flexible so as to form a substantially straight profile when compressed,” (Ex. 1001, Abstract) but “may be permanently-deformed into the curved configuration by heat setting the material” (id. at 6:1–4). As emphasized by Lifeport, the Specification teaches that a permanently deformed hook and frame—and, thus, a permanent curve—can be produced by heating Nitinol hook and frame combinations “at 550° for ten minutes.” Resp. 25–26 (citing Ex. 1001, 6:3– 4); see Ex. 2001 ¶ 77. When thus “permanently deformed,” “hook 20 may still be compressed into alignment with the frame 22 without losing the preset curve,” and subsequently “deployed in the curved configuration by releasing.” Ex. 1001, 6:7–9 (emphases added). We further note that the Specification makes clear that the disclosed hooks are incorporated into a variety of devices deployed in the veins of living bodies (see, e.g., Ex. 1001, 3:60–4:8), and subject to various physical forces therein. The ’662 patent, thus, discloses an embodiment having “a plurality of hooks 20 from the same incisions 40,” which “could form hooks 20 which project in opposing directions” and “provide superior resistance to radial and axial loads from the corporeal lumen and blood flow.” Ex. 1001, 5:33–37. In light of the foregoing, we refine our construction of “permanent curve” to be “a preset curve that maintains a fixed arc throughout normal use regardless of what configuration the device is in.” Insofar as Petitioners, and/or Petitioners’ expert, argue that the challenged claims are unpatentable under multiple constructions of this term, we address only those arguments relevant to this construction below.” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Lifeport has the more persuasive position. First, we note that endoprostheses such as those disclosed in the ’662 patent are deployed and function in a living body (see, e.g., Ex. 1001, 3:60–4:8). Accordingly, our construction of permanent curve as a preset curve that maintains a fixed arc throughout normal use regardless of the configuration of the device, is not limited to sheathed and unsheathed configurations taken in isolation. Thus, whereas Dr. Loomis’s analysis of Lefebvre focuses on the force applied by a catheter sheath impinging on a single tooth of the Lefebvre device, “throughout normal use” more broadly encompasses the deployed configuration of Lefebvre Figure 3 in which teeth 6, 7 penetrate into the vein wall “one in the direction of flow of the blood and the other in the opposite direction.” See Ex. 1003, 1:64–66. Dr. Loomis addressed the compressive effects during the application of a catheter sheath. We find no evidence that Dr. Loomis addressed compressive, hemodynamic, or other forces on the Lefebvre teeth when the device is deployed and functioning in normal use.9 9 Although an analysis of the forces applied to the Lefebvre device when it is deployed in a vein is among the issues raised in Medtronic’s Motion to Exclude Evidence, we need not resort to Dr. Loomis’s contested testimony as the omission is self-evident. We also are not persuaded by Medtronic’s assertion that Figure 3 and column 3, lines 34–42, of Lefebvre demonstrate The evidence of record is, therefore, insufficient to demonstrate that Lefebvre maintains a permanent curve as properly construed.” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “Lazarus specifically teaches that by modifying hooks like those of Lefebvre to make them sharper, or to configure them as barbs or arrowheads, more secure anchoring of the device can be achieved. . . . Thus, a person of skill in the art dealing with the problem of intraluminal device migration would have been motivated to combine the teaching of Lazarus with that of Lefebvre to achieve even stronger anchoring of the device to the lumen wall. For the reasons discussed above, we find that Lefebvre fails to disclose or suggest the “permanent curve” set forth in independent claims 1 and 10, from which claims 7, 8, and 15 depend. As there is no assertion of record that the missing element is provided in Lazarus, we conclude that Petitioners have not proven by a preponderance of the evidence that the combination of Lefebvre and Lazarus renders claims 7, 8, and 15 unpatentable under 35 U.S.C. § 103(a).” slip op. at 22

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We do not discern, nor does Dr. Loomis adequately explain, how the angular relationship of White’s engagement members, whether in an expanded, flat, or inwardly-projection configuration, comports with our construction of permanent curve. At best, Dr. Loomis identifies changes in the shape of White’s engagement members in response to temperature or compressive forces. On their face, such changes are incompatible with a permanent curve that is a preset curve that maintains a fixed arc throughout normal use regardless of what configuration the device is in. Dr. Loomis has not convinced us of a contrary interpretation of the White reference. Accordingly, we credit Ms. Gold’s testimony that “[n]othing in the disclosure of White indicates that the engagement members 21 have a permanent curve.” Ex. 2001 ¶ 59.” slip op. at 27

  Patent outcomesUS 7,147,662 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,147,662
• Medtronic, Inc. v. Nuvasive, Inc.All claims unpatentable
  PTAB · Apr 3, 2015 · IPR2014-00075 · APJ Francisco C Prats · IPR · Final written decision

  Claims 1, 2, 4, 5, 10, 15, 17, and 18 are unpatentable as obvious over Branch, Obenchain, Blewett, and Koros ’493.

  RulingsFinal written decision

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

    “allow safe and reproducible avoidance of nerves along a lateral trans-psoas path in a fashion that avoids the bony posterior elements of the spinal column. Ex. 1018, 11:51–54. Claim 1, however, does not require the “trans-psoas path” to pass through any particular portion of the psoas muscle, nor does the claim require any particular degree or extent of passage through the psoas. Moreover, the ’767 patent does not expressly define “trans-psoas path.” See also Tr. 39:12–40:1, 113:5–114:3 (conceding that the claims are not limited to any particular approach through the psoas muscle). Accordingly, we conclude that the broadest reasonable construction, consistent with the ’767 patent specification, of “trans-psoas path,” encompasses a path which passes through any portion of the psoas muscle, regardless of the degree or extent of the passage.” slip op. at 9

  • Skill levelOther

    “As to the level of ordinary skill in the pertinent art, the parties, as discussed below, challenge their opposing experts’ conclusions and qualifications. Nonetheless, neither party asserts specifically that the ultimate conclusion of obviousness turns on adoption of a particular level of ordinary skill. In that regard, the parties’ experts advance slightly different opinions as to the level of ordinary skill in the pertinent art. See Ex. 1016 ¶ 11 (Watkins Decl.)); Ex. 2020 ¶ 17 (Phillips Decl.). Both experts, nonetheless, agree generally that an ordinarily skilled artisan at the critical time would have been an experienced spinal surgeon, or an experienced engineer or professional involved in the implementation or design of surgical instruments for use in spinal surgery, with significant access to orthopedic or neurosurgeons. See id. When evaluating the parties’ contentions regarding the scope and content of the prior art, and the differences between the prior art and the challenged claims, we take into consideration both parties’ assertions regarding the level of ordinary skill. We note also that the level of ordinary skill in the art may be evidenced by the cited references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “Given Blewett’s teachings, Petitioner persuades us that an ordinarily skilled artisan, creating initial access into a patient for spinal surgery, using guidewires and a plurality of dilators as taught by Branch, would have been prompted to equip the initial dilator with a nerve monitoring electrode, as required by claim 1 of the ’767 patent, to allow the surgeon to avoid nerves. Petitioner persuades us also that an ordinarily skilled artisan would have been prompted to equip Branch’s retractor blades with a fixation element, as claim 1 requires. Specifically, Koros ’493 discloses that, in a system for providing spinal access similar to that described by Branch, providing two fixation screws that extend distally from the retractor blades, is “advantageous to provide stability and improve support for the distractor system.” Ex. 1006, 6:57–58.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “A reference does not teach away . . . if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). In the instant case, as noted above, the Obenchain reference teaches expressly the suitability of a lateral, psoas-traversing pathway when performing minimally invasive surgery on the lumbar spine. Ex. 1003, 6:22–31 (“If desired, the surgery may traverse through the psoas muscle. . . . [F]or example, where the patient has extensive abdominal adhesions, it may be preferred to use a lateral puncture of the abdomen to avoid bowel perforation, and entry into the disc space is lateral, transversing the psoas muscle . . . .”) (emphasis added). Given this express teaching, Petitioner persuades us (Reply 2, 13–14) that the Obenchain reference does not teach away from the lateral trans-psoas pathway required by claim 1 of the ’767 patent. slip op. at 16

  Patent outcomesUS 8,016,767 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,016,767
• Medtronic, Inc. v. Nuvasive, Inc.All claims unpatentable
  PTAB · Apr 3, 2015 · IPR2014-00034 · APJ David C Mckone · IPR · Final written decision

  Claims 1, 5, 7–9, 13–18, and 20 are unpatentable as obvious under §103(a) over the specified combinations of prior art.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “psoas approach” and “when advanced in the trans-psoas path,” as recited in independent claims 1 and 9, are statements of intended use and are entitled to no patentable weight, beyond requiring an ability to follow a “trans-psoas path” or “trans-psoas approach.” Dec. 8–9; see also Marrin v. Griffin, 599 F.3d 1290, 1294 (Fed. Cir. 2010) (“For apparatus claims . . . generally patentability ‘depends on the claimed structure, not on the use or purpose of that structure.’”) (quoting Catalina Marketing Int’l v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002)); In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.”). Petitioner and Patent Owner do not dispute these constructions. In view of this, and upon consideration of the complete record developed during this trial, we maintain these constructions.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “Petitioner and Patent Owner do not dispute these constructions. We maintain these constructions based on the complete record developed during this trial. Neither Petitioner nor Patent Owner identifies any additional terms requiring construction. No other terms require express construction for purposes of this Decision.” slip op. at 8

  • ExcludeMotion to exclude, deniedGranted in part

    “Petitioner moves to exclude Exhibits 2033–36, 2042, and 2051 as hearsay. Mot. to Exclude 2–3. Patent Owner argues that Exhibits 2033, 2035, and 2036 are offered to show the declarants’ states of mind. Opp. to Mot. to Exclude 3–4 (citing FED. R. EVID. 803(3)). We agree that they are offered for non-hearsay purposes. Therefore, we deny the motion to exclude Exhibits 2033, 2035, and 2036. We do not rely on Exhibits 2034, 2042, and 2051. Therefore, Petitioner’s motion to exclude them is dismissed as moot. Petitioner moves to exclude Exhibits 2039, 2041, 2056, 2058, 2059, and 2066 as hearsay. Mot. to Exclude 4–5. Patent Owner introduces these exhibits as financial industry objective indicia of commercial success and praise. Patent Owner argues that these documents are introduced for non-hearsay purposes, such as showing industry praise and the states of mind of the declarants. Opp. to Mot. to Exclude 7–8. Petitioner contends that these exhibits are not reliable because the authors of those exhibits are not skilled artisans. Mot. to Exclude 4–5. We agree with Patent Owner (Opp. to Mot. to Exclude 8), however, that the credentials of the authors go to the weight of the evidence, not its admissibility. Accordingly, we deny Petitioner’s motion to exclude Exhibits 2039, 2041, 2056, 2058, 2059, and 2066. Petitioner moves to exclude Exhibit 2062 as being out of compliance with 37 C.F.R. § 42.53. Mot. to Exclude 5. We do not rely on Exhibit 2062. Therefore, Petitioner’s motion to exclude it is dismissed as moot. In sum, we deny-in-part and dismiss-in-part Petitioner’s Motion to Exclude.” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We agree with Petitioner that the claims of the ’782 patent include aspects of both spine surgery and neurophysiology. We recognize that each declarant in this case has a particular expertise stronger in one aspect than the other. Nevertheless, we have considered the testimony of each of the declarants and have taken into account each’s respective expertise in weighing his testimony. Both parties argue that the other party’s declarant was unfamiliar with the legal standards for obviousness. PO Resp. 34–36; Reply 10. We have taken the parties’ arguments into account in weighing the testimony of the declarants. We recognize, however, that neither party’s declarants are attorneys.” slip op. at 13

  Patent outcomesUS 8,000,782 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,000,782

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.