- Fisher & Paykel Healthcare Limited v. Resmed LimitedInstitution deniedPTAB · May 3, 2017 · IPR2017-00218 · APJ James J Mayberry · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, upon considering the Petition, Patent Owner Preliminary Response, and supporting evidence, we conclude that the information presented in the Petition fails to establish a reasonable likelihood that Fisher will prevail with respect to at least 1 of the Challenged Claims, and we do not institute inter partes review on any of the Challenged Claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“’316 patent pertains is “a bachelor’s degree in mechanical engineering, biomedical engineering, or other similar type of engineering degree, combined with at least two years of experience in the field of masks, respiratory therapy, patient interfaces, or relevant product design experience.” Pet. 13 (citing Ex. 1107 (Decl. of Jason Eaton) ¶ 27). ResMed does not dispute this characterization of the level of ordinary skill at this time. Factual indicators of the level of ordinary skill in the art include “the various prior art approaches employed, the types of problems encountered in the art, the rapidity with which innovations are made, the sophistication of the technology involved, and the educational background of those actively working in the field.” Jacobson Bros., Inc. v. United States, 512 F.2d 1065, 1071 (Ct. Cl. 1975); see also Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983) (quoting with approval Jacobson Bros.). We find, based on our review of the record before us, that Fisher’s asserted level of ordinary skill in the art is reasonable and, for the purposes of this Decision, we adopt Fisher’s definition.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“As discussed above in our brief summary of the prosecution history, each of the independent claims challenged in the Petition (claims 33, 38, 41, 46, 75, and 78) includes a variation of the “fixed, non-adjustable position” limitation. This amendment distinguished Matula’s mask system, which includes an adjustment mechanism that adjusts the position of its cushion component relative to its frame. We agree with ResMed that the plain and customary meaning of the “fixed, non-adjustable position” limitations, in view of the Specification and prosecution history, limits the claimed structure to a structure where the engagement between the cushion component and common frame prevents relative movement and adjustment between the cushion component and common frame. We adopt this claim interpretation for this Decision.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We do not read the “fixed, non-adjustable position” limitations of claims 33, 38, 41, 46, 75, and 78 so broadly. As ResMed correctly argues, at all times, Berthon-Jones’s adjustment wheel 530 is available to adjust mask 510, causing relative motion between cushion/secondary frame 514 and chassis 512. See Prelim. Resp. 28–29. As such, the disclosed structure is not in a “non-adjustable” configuration as required by claims 33, 38, 41, 46, 75, and 78. Finally, ResMed argues that the structure of Berthon-Jones, including an adjustment mechanism, was disclaimed during the prosecution of the application that matured into the ’316 patent. Prelim. Resp. 29–30. As ResMed illustrates in its Preliminary Response, the claims of the ’316 patent were amended to distinguish the Matula reference, with its adjustment mechanism. See id. at 30–31. We agree that ResMed disclaimed a mask system with an adjustment mechanism that adjusts the relative position of a cushion component and a frame. Accordingly, for the reasons above, we find that the Petition fails to establish a reasonable likelihood that Berthon-Jones discloses the subject matter of the “fixed, non-adjustable position” limitations of claims 33, 38, 41, 46, 75, and 78.” slip op. at 20
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,381,316 - Fisher & Paykel Healthcare Limited v. Resmed LimitedInstitution deniedPTAB · May 3, 2017 · IPR2017-00215 · APJ James J Mayberry · IPR · Institution
The Board denied institution for claims 1–32 and 59–74 because the petition did not show a reasonable likelihood of prevailing on any challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, upon considering the Petition, Patent Owner Preliminary Response, and supporting evidence, we conclude that the information presented in the Petition fails to establish a reasonable likelihood that Fisher will prevail with respect to at least 1 of the Challenged Claims, and we do not institute inter partes review on any of the Challenged Claims.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“Finally, ResMed argues that the structure of Berthon-Jones, including an adjustment mechanism, was disclaimed during the prosecution of the application that matured into the ’316 patent. Prelim. Resp. 28. As ResMed illustrates in its Preliminary Response, the claims of the ’316 patent were amended to distinguish the Matula reference, with its adjustment mechanism. See id. at 28–30. We agree that ResMed disclaimed a mask system with an adjustment mechanism that adjusts the relative position of a cushion component and a frame. Accordingly, for the reasons above, we find that the Petition fails to establish a reasonable likelihood that Berthon-Jones discloses the subject matter of the “fixed, non-adjustable position” limitations of claims 1, 59, and 65. Further, with respect to claim 59, Fisher fails to assert that Gunaratnam cures the deficiency discussed above.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We agree with ResMed and determine that Fisher’s alternative position with respect to the “fixed, non-adjustable position” limitations of claims 1, 59, and 65 fails to establish a reasonable likelihood that these claims are rendered obvious by the prior art of record. Fisher fails to adequately explain its obviousness positions based on Barnett disclosing the “fixed, non-adjustable position” limitations of claims 1, 59, and 65. Specifically, Fisher does not explain if its obviousness position is that, based on the teachings of Barnett of a fixed, non-adjustable relationship between a cushion component and common frame, that a person having ordinary skill in the art would modify Berthon-Jones’s mask 510 to remove adjustment wheel 530. See Prelim. Resp. 32 (“Petitioner never proposes that Berthon- Jones’s adjustment feature or the adjustment wheels [5]30 be removed.”). Fisher also fails to explain if its alternative position is that an artisan of ordinary skill would have replaced Berthon-Jones’s cushion/secondary frame 514 and chassis 512 with Barnett’s seal 32 and collar 34, yet retain other features of Berthon-Jones’s mask relied on for other claim elements. See id. at 31. Finally, although Fisher provides reasons for its proposed modifications, none of the reasons address this alternative teaching of a fixed, non-adjustable structure by Barnett. See Pet. 36–39. Fisher does not argue or adequately explain why one of ordinary skill in the art would have modified the Berthon-Jones mask with the non-adjustable features disclosed in Barnett. Accordingly, for the reasons above, we find that the Petition fails to establish a reasonable likelihood that, to the extent Barnett discloses the subject matter of the “fixed, non-adjustable position” limitations of claims 1, 59, and 65, these claims are rendered obvious by the prior art of record. 2. Grounds 3–6” slip op. at 26
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,381,316 - Fisher & Paykel Healthcare Limited v. Resmed LimitedInstitution deniedPTAB · Apr 11, 2017 · IPR2017-00064 · APJ Richard E Rice · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim, principally for lack of a reasoned basis to combine Barnett and Ogden.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“d. Analysis of Claims 57, 58, 61, 69, and 77–79 Petitioner has not persuaded us that a PHOSITA would have substituted Barnett’s unitary seal member with Ogden’s separate cushion/frame construction. See Pet 32 (citing Ex. 1202, 3:62–4:19; Ex. 1211 ¶¶ 71–72). Ogden’s rigid shell 3 is made of hard plastic and encloses the patient’s nose and nares, and Ogden’s separate seal 5 is made of a soft and pliable material such as urethane foam, attaches to the rear perimeter portion of shell 3, and seals against the patient’s face. Ex. 1203, 2:50–57. In contrast, Barnett teaches that the seal member, including its nose receiving cavity, is “defined from a unitary piece of elastomeric material.” Ex. 1202, 1:58–60 (emphasis added); see also id. at 2:24-27 (“The nasal mask assembly includes a seal member defined from a unitary piece of elastomeric material. The seal member includes a nose receiving cavity.” (emphasis added)); id. at 3:62–66 (“[S]eal member 32 is preferably defined from a unitary piece of elastomeric material that is relatively flexible when a deformation force is applied thereto, yet returns to its original shape when the deformation force is removed.” (emphases added); id. at 3:67–4:3 (“Seal member 32 has a first end portion 38 and a second end portion 40 generally opposite first end portion 38 with a nose receiving cavity 42 defined therebetween.”).” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“recognized the need for additional structure in the cushion module to hold the cushion in place” (Ex. 1211 ¶ 72) is conclusory and unpersuasive.8 Neither Petitioner nor Mr. Eaton explains why a PHOSITA would have concluded that the side-wall support mechanisms described in Barnett do not provide adequate structure to hold the cushion in place. More specifically, Mr. Eaton asserts that “a cushion module of a unitary soft material [would] deform under pressure, thus leading to undesired displacement of the mask assembly and its seal” (Ex. 1211 ¶ 72), but fails to explain why the side-wall support mechanisms described in Barnett would not prevent such distortion and displacement. As such, Mr. Eaton’s testimony does not appear to take into account Barnett’s disclosure with respect to ribs 56, for example, that 8 Petitioner’s similar assertion—that “a person of ordinary skill in the art would have been motivated to provide a cup-shaped rigid frame, as taught by Ogden, that is formed from a material more rigid than the cushion to provide a solid mounting base for the cushion module and prevent movement of the cushion module” (Pet. 32 (emphasis added))—is also conclusory and unpersuasive. “ribs 56 . . . provide structural support for the sides of the seal member so that the seal member does not collapse when a strapping force9 sufficient to minimize[] leaks at the mask-patient interface is applied on second end portion 40.” Ex. 1202, 5:12–18; see also id. at 5:20–21, 27–29 (stating that the ribs are approximately twice as thick as the remaining side wall portions of seal member 32, but can have other thicknesses so long as they provide sufficient support for the side walls of the seal member).10 Nor does Mr. Eaton explain why or how a PHOSITA would have known that Ogden’s cushion/frame construction would resist displacement more effectively than Barnett’s unitary seal member with ribs. See Ex. 1211 ¶ 72. Petitioner’s assertion that incorporating Ogden’s rigid frame in Barnett’s seal member would have provided a solid mounting base for the cushion module (see Pet. 32) is similarly conclusory and unpersuasive. “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (quoted in 9 Barnett defines “strapping force” as the force by which the nasal mask assembly is pressed against the patient’s face. Ex. 1202, 5:4–7. 10 Mr. Eaton states that the problem of internal positive air pressure caused by a flow generator designed to provide more than a single level of pressure would be particularly problematic, because the displacement of the mask would be dynamic based on breathing and delivered pressure over time. Ex. 1211 ¶ 72. However, Mr. Eaton does not explain whether that problem would be more severe, or require a different solution, than the problem of a “strapping force sufficient to minimize[] leaks at the mask-patient interface,” as described in Barnett. See Ex. 1202, 5:12–18. KSR, 550 U.S. at 418). Petitioner does not explain with sufficient specificity why a PHOSITA would have substituted Barnett’s neck portion 46 with Ogden’s rigid cup-shaped frame to provide a solid mounting base for the seal member. The general goal of providing a solid mounting base for the cushion module is not enough. Indeed, Barnett expressly discloses that “neck portion 46 is relatively thick as compared to a remainder of the seal member to provide a solid mounting base for the seal member.” Ex. 1202, 4:17–19 (emphasis added).” slip op. at 20
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We do not agree, therefore, with Mr. Eaton’s opinion that Barnett’s disclosure “that neck portion 46 and plurality of ribs 56 may be formed of a different substance than the rest of the seal member . . . indicates that the cushion module of Barnett could take on a well-known cushion/frame construction.” See Ex. 1211 ¶11 (citing 1202, 7:28–36, Fig. A). Mr. Eaton’s reading of Barnett does not account sufficiently for the description of the invention as “a one-piece, light-weight seal member defining a nose receiving cavity.” Ex. 1202, 1:9– 11; see id. at 2:24–27; see also id. at 3:62–4:3 (describing an exemplary embodiment in similar terms). Moreover, Mr. Eaton’s testimony that “a skilled artisan would have recognized the need for additional structure in the cushion module to hold the cushion in place” (Ex. 1211 ¶ 72) is conclusory and unpersuasive.8 Neither Petitioner nor Mr. Eaton explains why a PHOSITA would have concluded that the side-wall support mechanisms described in Barnett do not provide adequate structure to hold the cushion in place. More specifically, Mr. Eaton asserts that “a cushion module of a unitary soft material [would] deform under pressure, thus leading to undesired displacement of the mask assembly and its seal” (Ex. 1211 ¶ 72), but fails to explain why the side-wall support mechanisms described in Barnett would not prevent such distortion and displacement. As such, Mr. Eaton’s testimony does not appear to take into account Barnett’s disclosure with respect to ribs 56, for example, that” slip op. at 19
- Skill levelSkill level petitioner adoptedOther
“II. ANALYSIS A. Level of Skill in the Art Petitioner asserts that a person having ordinary skill in the art (“PHOSITA”) “would have at least a bachelor’s degree in mechanical engineering, biomedical engineering or other similar type of engineering degree combined with at least two years of experience in the field of masks, respiratory therapy, patient interfaces or relevant product design experience.” Pet. 16 (citing Ex. 1211 ¶ 27). Based on our review of the Petition and evidence, including Mr. Eaton’s testimony, we find that Petitioner’s asserted level of skill in the art is reasonable and, for the purposes of this Decision, we adopt that definition.” slip op. at 9
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,119,931 - Fisher & Paykel Healthcare Limited v. Resmed LimitedInstitution deniedPTAB · Apr 11, 2017 · IPR2017-00065 · APJ Richard E Rice · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 4–8, 10–22, 25, 26, 28–32, 46, 51, 53–56, and 65 were unpatentable over the asserted §103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon considering the Petition and the evidence filed therewith, we determine that Petitioner has not shown a reasonable likelihood that it would prevail with respect to any of challenged claims 1, 4–8, 10–22, 25, 26, 28– 32, 46, 51, 53–56, and 65. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“PHOSITA”) “would have at least a bachelor’s degree in mechanical engineering, biomedical engineering or other similar type of engineering degree combined with at least two years of experience in the field of masks, respiratory therapy, patient interfaces or relevant product design experience.” Pet. 16–17 (citing Ex. 1312 ¶ 27). Based on our review of the Petition and evidence, including Mr. Eaton’s testimony, we find that 6 US 6,631,718 B1, iss. Oct. 14, 2003 (Ex. 1311, “Lovell”). 7 WO 2007/045008 A1, pub. Apr. 26, 2007 (Ex. 1306, “Worboys”). 8 US 6,412,488 B1, iss. July 2, 2002 (Ex. 1309, “Barnett”). 9 US 2004/0226566 A1, pub. Nov. 18, 2004 (Ex. 1304, “Gunaratnam-II”). Petitioner’s asserted level of skill in the art is reasonable and, for the purposes of this Decision, we adopt that definition.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“protruding vent arrangement” claim term would be satisfied by adding a vent to a portion of Matula-I’s cushion frame 1260 that extends through opening 1250 of body portion 1240. Id. at 27–28, 33–34, 69–71; see Ex. 1312 ¶¶ 63–67. As such, Petitioner contends, implicitly, that the “protruding vent arrangement” claim term broadly encompasses a vent in a portion of the frame that extends through an opening in the shroud module. We disagree with Petitioner’s implicit claim construction. Petitioner’s construction is contrary to the plain language of the claim term, which requires the frame to have a “vent arrangement” that is “protruding” (rather than reciting that the frame has a protruding portion that includes a vent arrangement having a plurality of holes). Petitioner’s construction also is inconsistent with the Specification. As described in the Specification and depicted in Figure 3 (reproduced above on page 3), protruding vent arrangement 1076 is a discrete vent structure that extends above the surrounding surface of frame 1040 and contains a plurality of vent holes. Ex. 1301, 7:18–23 (“The top end of the shroud 1020 . . . includes an opening or vent receiving hole 1021 to accommodate the vent arrangement 1076 that protrudes from the frame 1040.” (emphasis added)), Fig. 3. Contrary to Petitioner’s implicit claim construction, protruding vent arrangement 1076 is described in the Specification as extending from the surface of the frame, and not merely as extending through an opening in shroud 1020. See id. slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“Matula-I’s mask, so as to include the protruding vent arrangement limitation, by adding a vent to a portion of Matula-I’s cushion frame 1260 that protrudes through opening 1250 of body portion 1240. Petitioner’s analysis, however, is based on an improper claim construction, as discussed above. See supra Section II.B.1. Under a proper claim interpretation, the limitation requires a discrete vent structure that extends above the surrounding surface of the frame and contains a plurality of vent holes or gas washout holes. See id. Petitioner does not contend that either Matula-I or Gunaratnam-I specifically teaches or suggests a protruding vent arrangement having a plurality of vent holes or gas washout holes. Rather, Petitioner contends that both references teach positioning a vent in the nasal bridge region of a mask. Merely positioning a vent in a portion of Matula-I’s mask that protrudes through opening 1250 of body portion 1240, such as the nasal bridge region, would not result in a discrete vent structure that extends above the surrounding surface of the frame and contains a plurality of vent holes or gas washout holes, as required under our claim interpretation. The vent would be flush with the surrounding surface of the frame, for example, in the nasal bridge region of the frame. We are unpersuaded, therefore, that the combination of Matula-I and Gunaratnam-I teaches or suggests the protruding vent arrangement limitation. For the reasons given, we determine that Petitioner has not established a reasonable likelihood of prevailing on its challenges to claims 1, 4–8, 10– 22, 25, 26, 28–32, 46, 51, 53–56, and 65, each of which requires the protruding vent arrangement limitation.” slip op. at 13
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,119,931 - The Toro Company v. MTD Products Inc.Rehearing deniedPTAB · Apr 11, 2017 · IPR2016-01352 · APJ William V Saindon · IPR · Rehearing
The Board denied Toro’s rehearing request and left institution denied because the Petition did not persuasively explain why a skilled artisan would combine Irikura’s steering assembly with Hauser.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Decision” or “Dec.”) denying institution of an inter partes review of U.S. Patent No. 9,254,865 (Ex. 1001, “the ’865 patent”). Paper 10 (“Req. Reh’g”). When rehearing a decision by the Board on whether to institute a trial, the Board reviews the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion has occurred if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burden of showing that our Institution Decision should be modified lies with Petitioner, the party challenging the decision. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. This latter requirement is critical; requests for rehearing are not an opportunity to raise new arguments but rather an opportunity to point us to arguments we overlooked or misapprehended.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Hauser’s instruction to employ “sound engineering judgment” in the selection of a front steering assembly. Req. Reh’g 9–11. Regardless of any instruction in Hauser, what was missing in the Petition was an explicit and persuasive explanation of why a person of ordinary skill in the art would have looked to Irikura’s front wheel steering assembly. Irikura does not describe itself as a zero-degree turning vehicle, and as we found in our Decision, Petitioner has not explained why a person of ordinary skill in the art would have looked to it for modifying a zero-degree turning vehicle such as Hauser. Dec. 9. Petitioner points us to no passage in the Petition that we overlooked or misapprehended on this point, and instead merely offers additional arguments.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Hauser’s instruction to employ “sound engineering judgment” in the selection of a front steering assembly. Req. Reh’g 9–11. Regardless of any instruction in Hauser, what was missing in the Petition was an explicit and persuasive explanation of why a person of ordinary skill in the art would have looked to Irikura’s front wheel steering assembly. Irikura does not describe itself as a zero-degree turning vehicle, and as we found in our Decision, Petitioner has not explained why a person of ordinary skill in the art would have looked to it for modifying a zero-degree turning vehicle such as Hauser. Dec. 9. Petitioner points us to no passage in the Petition that we overlooked or misapprehended on this point, and instead merely offers additional arguments.” slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“ZTR turns. Req. Reh’g 3–6. In our Decision, we found that “Petitioner does not direct us to evidence that Irikura itself is a ZTR vehicle or describes a steering assembly for zero-degree turns.” Dec. 7. In other words, we found that Irikura does not hold itself out as a ZTR-capable vehicle. Petitioner’s Request fails to identify any disclosure in Irikura that we misapprehended on this point. Instead, Petitioner’s Request points us to the testimony of its declarant, Mr. Smith. Regarding his testimony, we found in our Decision that “Petitioner’s evidence that Irikura’s steering assembly nonetheless is capable of zero-degree turns is unpersuasive.” Id. at 7–9. We considered Mr. Smith’s testimony that Irikura must provide a zero-degree turn in order not to scuff when providing a zero-degree turn to involve circular reasoning. Id. at 8. We also found that Mr. Smith’s testimony regarding the operation of Irikura’s front wheel gear assembly based on modified versions of the drawings to be improper. Id. at 8–9. Specifically, the analysis of Petitioner and Mr. Smith was based on projections of the behavior of components in Irikura that impermissibly relied on the precision of drawings, rather than on actual disclosure of Irikura (which was silent on the matter). As we stated in our Decision, absent indication in the specification (or other indications of dependability), extrapolations based on the precision and accuracy of the drawings are improper. Id. Petitioner now directs us to Mr. Smith’s testimony that allegedly stands for the premise Irikura provides a zero-degree turn because it has drive wheels capable of rotating in opposite directions. Req. Reh’g 3–4 (citing Ex. 1007 ¶¶ 75–76). Petitioner does not point to where this argument was developed in the Petition. See 37 C.F.R. § 42.71(d).” slip op. at 3
§ 103 obviousnessPatents in suitUS 9,254,865 - Carefusion Corporation v. Baxter International, Inc.Rehearing deniedPTAB · Mar 27, 2017 · IPR2016-01463 · APJ Richard E Rice · IPR · Rehearing
The Board denied rehearing of institution on the Bollish–TITRATOR obviousness ground for claims 1–3, 6, 7, and 16, finding no abuse of discretion or overlooked matter.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION A. Applicable Requirements A request for rehearing will be reviewed for abuse of discretion. 37 C.F.R. § 42.71(c). The request must identify specifically all matters that a party believes the Board misapprehended or overlooked, and the place in the record where each matter was previously addressed. 37 C.F.R. § 42.71(d); see Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In the present case, the burden of persuasion falls on Patent Owner as the moving party. 37 C.F.R. § 42.71(d).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Contrary to Patent Owner’s argument, an actual, physical substitution of elements in not required for obviousness. In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.”). Nor does obviousness depend upon precise teachings directed to the specific subject matter of the challenged claims. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[T]he [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”). Moreover, in arguing that one of ordinary skill in the art would not have been motivated to make the asserted combination, Patent Owner relies on its own arguments and testimonial evidence, but does not address the arguments and evidence of Petitioner that we found sufficient at this stage of the proceeding to support Petitioner’s challenge to claims 1–3, 6, 7, and 16 as obvious over Bollish and TITRATOR.” slip op. at 3
§ 103 obviousnesscites KSRPatents in suitUS 6,231,560 - Fisher & Paykel Healthcare Limited v. Resmed LimitedInstitution deniedPTAB · Mar 16, 2017 · IPR2017-00057 · APJ James J Mayberry · IPR · Institution
The Board denied institution because Fisher did not show a reasonable likelihood of prevailing on any challenged claim, primarily for lack of a reasoned motivation to modify Gunaratnam using Lovell.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, upon considering the Petition and evidence, we conclude that the information presented in the Petition fails to establish a reasonable likelihood that Fisher will prevail with respect to at least 1 of the Challenged Claims, and we do not institute inter partes review on any of the Challenged Claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Factual indicators of the level of ordinary skill in the art include “the various prior art approaches employed, the types of problems encountered in the art, the rapidity with which innovations are made, the sophistication of the technology involved, and the educational background of those actively working in the field.” Jacobson Bros. v. United States, 512 F.2d 1065, 1071 (Ct. Cl. 1975); see also Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983) (quoting with approval Jacobson Bros.). We find, based on our review of the limited record before us, that Fisher’s 2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 296–307 (2011), took effect on September 16, 2012. Because the application for the patent at issue in this proceeding has an effective filing date before that date, we refer to the pre-AIA versions of the statute. asserted level of ordinary skill in the art is reasonable and, for the purposes of this Decision only, we adopt Fisher’s definition.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Fisher contends that the terms of the Challenged Claims “should be accorded their ‘broadest reasonable construction’ in light of the specification of the ’196 [p]atent” and does not offer any express constructions for any term in the Challenged Claims. See Pet. 11. Because the parties do not dispute the construction of any terms, we need not expressly construe any term to resolve a controversy between the parties. Accordingly, we do not offer any express constructions here.3 See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (construing explicitly only those claim terms in controversy and only to the extent necessary to resolve the controversy).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“having a bore and an interfacing structure associated with the bore. As Fisher contends, the terms of claim 23 are entitled to the broadest reasonable construction in light of the Specification of the’196 patent. We determine, for the purposes of this Decision, however, that the term “bore” is not broad enough to encompass the opening in clip 800—that is, Fisher’s implicit construction of the term “bore” to encompass the opening in clip 800 is unreasonably broad. As seen in annotated Figure 7a from Gunaratnam, reproduced above, clip 800 forms a frame corresponding to the outline shape of frame 160. Clip 800 includes an interior of the frame that is open. In contrast, the term “bore” would be understood to be a hole or opening, typically cylindrical, formed in a structure by or as if by boring. See, e.g., MERRIAM-WEBSTER ONLINE DICTIONARY, available at https://www.merriam-webster.com/dictionary/bore, last visited Mar. 9, 2017 (defining “bore” as “a usually cylindrical hole made by or as if by the turning or twisting movement of a tool: a hole made by or as if by boring”). This understanding of the term “bore” is consistent with the Specification of the ’196 patent, which identifies cylindrical openings as bores. See, e.g., Ex. 1001, Fig. 2A, 6:21–38 (identifying central bore 224). Fisher points us to nothing in the Specification or prosecution history, or in any extrinsic evidence, to support its broader interpretation.” slip op. at 18
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,960,196 - Palo Alto Networks, Inc. / Symantec Corp. v. Finjan, Inc.No claims unpatentablePTAB · Mar 15, 2017 · IPR2016-00919 · APJ Miriam L Quinn · IPR · Final written decision
Claims 1–8, 10, and 11 were not shown unpatentable: Khazan did not teach invocation of the second function only if safe, and the asserted three-reference combination lacked a sufficient motivation to combine.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“reference to a “data container” (id. at 13:5152) and “network content” (id. at 4:3737), the concern over scripts embedded in web pages or “other web content” (id. at 1:3739), we conclude that the Specification of the ’154 patent uses the claimed “content” to refer broadly to the data or information, modified for processing, that the client receives from the network, where, in the case of the Internet, it may refer to a web page and its elements. This interpretation is consistent also with the meaning of the term in the art, as evidenced by dictionaries concerning computing and engineering. See content, Microsoft Computer Dictionary, 125 (5th ed. 2002) (Ex. 3002) (defining “content” as (1) “the data that appears between the starting and ending tags of an element in an SGML, XML, or HTML document. The content of an element may consist of plain text or other elements,” (2) “The message body of a newsgroup article or e-mail message;” and (3) “The ‘meat’ of a document, as opposed to its format or appearance.”); see also content, WILEY ELECTRICAL AND ELECTRONICS ENGINEERING DICTIONARY, 142 (2004) (Ex. 3001) (“Information, especially that which is available online, which may be any combination of text, audio, video, files, or the like.”). Accordingly, under the broadest reasonable interpretation in the context of the Specification and the surrounding claim language, we conclude that “content” is data or information, which has been modified and is received over a network.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“first function.” The Specification, however, does use the phrase “function call” to state that “before the client computer invokes a function call that may potentially dynamically generate malicious code, the client computer passes the input to the function to the security computer for inspection.” Ex. 1001, 4:3743 (emphasis added). The Specification also states that “the present invention operates by replacing original function calls with substitute function calls within the content, at a gateway computer, prior to the content being received at the client computer.” Id. at 4:5760. Therefore, we understand the Specification to use the phrase “function call” in the same sense as the phrase “call to a [] function.” That is, a program instruction specifies the function name and its parameters, where execution of the instruction results in the function providing a service. Thus, we find the dictionary definition of the term “function call” applicable here and indicative of the meaning of the term to a person of ordinary skill in the art.” slip op. at 14
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Id. (displaying a stamp labeled “Engineering Periodicals, University of Washington, Jan 31, 2000”). Additionally, the cover page includes a label stating “Engineering Library Display Periodical Noncirculating until: Mar 08 2000.” Id. The stamps and labels are described by Mr. Melvin (“Mel”) DeSart, Head of the University of Washington Engineering Library, as evidence that the Library’s process was to stamp a received periodical and to affix a label when the periodical was chosen for display at the Engineering Library Display Periodicals area. Ex. 1036 ¶ 2. According to DeSart, the stamp and label convey that the article was received (and, therefore, stamped) at the University of Washington Libraries, on January 31, 2000, and was redirected to the Engineering Library, where it was added to the display and made “publicly available” from February 8, 2000 until March 8, 2000. Id. ¶ 3. We credit DeSart’s testimony regarding the normal business practices of the Library at which he is employed since March 2000. Id. ¶ 1. His opinion is based on personal knowledge of these business practices and his familiarity with the Library’s business records. Id.; Ex. 2006, 14:515:20. The copy of the article, with the first page we discuss above, is a copy of the periodical maintained by the Library in its ordinary course of business, and is authenticated as such. Id. ¶ 3. Further indicia of publication supports our determination that Sirer is a printed publication. The copyright page of the Library copy provides for limited rights to copy and “republish” with permission and/or a fee by contacting the publications department of ACM. Id., 5. That page also includes an ACM ISBN number (1-58113-140-2) and instructions on how to order additional copies, information which is also included in the footer of Exhibit 1004, indicating that copies of the periodical were available from ACM without restriction. Id. Therefore, based on the foregoing, we conclude that Sirer is a printed publication. Moreover, considering the dates on the face of the article, the circumstances surrounding the receipt of the periodical at the library, and the business practice of circulating periodicals at the Engineering Library, we determine that Sirer’s date of publication is evident as of February 8, 2000, when the Library would have displayed the periodical, and as early as January 2000, when a subscriber to the periodical, such as the Library of Washington, would have received the periodical.12 See Ex. 2006, 17:615 (DeSart testifying that journals published by ACM were received directly from the publisher under a subscription); 21:2222:8.” slip op. at 25
- Skill levelSkill level board ownOther
“level of ordinary skill that is different from Petitioner’s. Ex. 2002 ¶ 35. In Particular, Dr. Medvidovic opines that a person of ordinary skill in the art would have a “bachelor’s degree in computer science or related field, and either (1) two or more years of industry experience and/or (2) an advanced degree in computer science or related field.” Id. In comparison, it appears that the minimum experience under Patent Owner’s proffered level of skill is one year less than Petitioner’s. Also, Patent Owner proffers an alternative to work experience, namely an advanced degree. There is no specific articulation regarding how the difference of one year experience or the proposed alternative of an advanced degree in lieu of experience tangibly affects our obviousness inquiry. Further, there is no evidence in this record that the differences noted above impact in any meaningful way the level of expertise of a person of ordinary skill in the art. Indeed, we note that Dr. Medvidovic’s opinions would not change if he had considered instead the level or ordinary skill in the art proffered by Dr. Rubin. Id. ¶ 38. Accordingly, we determine that in this case no express definition of the level of ordinary skill in the art is necessary and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 17
Patent outcomesUS 8,141,154 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,141,154 - PTAB · Mar 15, 2017 · IPR2016-00999 · APJ Jeffrey S Smith · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution for claims 1–28 because Petitioner did not show a reasonable likelihood that steered planar-array beams are necessarily asymmetrical.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The request must identify, with specificity, all matters that the moving party believes the Board misapprehended or overlooked. See 37 C.F.R. § 42.71(d). Section 42.71(d) further provides that the request must identify where each matter was previously addressed.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Lastly, Petitioner contends the Decision overlooked or “misapprehended the facts showing that all steered planar array antennas inherently result in radiation patterns having at least one asymmetrical beam.” Req. 13–15. According to Petitioner, Figure 4 of U.S. Patent No. 5,929,823 (Exhibit 2010) and Figure 3 of U.S. Patent No. 6,198,434 (Exhibit 2011), relied upon in Patent Owner’s Preliminary Response as describing remedies for distortion effects due to asymmetrical beams (Prelim. Resp. 47–48), do not eliminate the inherent asymmetry of the main beam. Req. 14. However, our Decision relies on Paragraphs 151 to 156 of Mr. Cosgrove’s testimony (Ex. 2001), which cite additional sections of Exhibits 2010 and 2011, to determine that the steered beams of a planar array are not necessarily asymmetrical. Dec. 21–23 (citing Ex. 2001 ¶¶ 151–156). For example, Mr. Cosgrove addresses the asymmetric bulge shown in Figure 4 of Exhibit 2010 by citing to a description of Figure 6, which describes a lobe symmetry of main lobe 610 that presents a more slender beam mid-section than that of main lobe 410 of Figure 4. Ex. 2001 ¶ 152 (citing Ex. 2010, 7:65–8:6). Mr. Cosgrove also addresses the asymmetric bulge shown in Figure 3 of Exhibit 2011 by citing to a description of Figure 6, which describes main lobe 610 as substantially symmetric, and more suited than lobe 310 of Figure 3 to provide communications within a defined subsection of an area to be served. Ex. 2001 ¶ 156 (citing Ex. 2011, 10:13–16). Accordingly, the Decision did not misapprehend or overlook any arguments or evidence presented by Petitioner. We did not abuse our discretion in determining that the Petitioner did not adequately establish a reasonable likelihood that a steered beam of a planar array is necessarily asymmetrical.” slip op. at 5
NonePatents in suitUS 8,311,582 - Apple Inc. v. Fastvdo LLCRehearing deniedPTAB · Mar 15, 2017 · IPR2016-01203 · APJ Jeffrey S Smith · IPR · Rehearing
The Board denied FastVDO’s rehearing request, leaving institution of review of claims 7–11 and 22–26 in place because no overlooked or misapprehended matter was shown.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“argue that Petitioner provided a “sole theory” for the claimed “error protection means” based on indefiniteness. Rather, Patent Owner argued generally that “Petitioner does not describe the structure, materials, or acts corresponding to the terms that Petitioner contends are in means-plus-function format.” Prelim. Resp. 11. Because Patent Owner did not present its “sole theory” argument in the Preliminary Response, the Board could not have misapprehended or overlooked this argument. Even considering this argument, we are not persuaded. In our Decision, we disagreed with Petitioner’s indefiniteness arguments, but nonetheless found that the Petition identifies sufficient structure to support constructions of the means-plus-function limitations. Dec. 10–16. Rather than misapprehend or overlook Patent Owner’s arguments, we found that the Specification of the ’482 patent “discloses enough of an algorithm to allow a person of ordinary skill to discern the necessary structure for performing the claimed function of the ‘error protecting means.’” Dec. 12.” slip op. at 4
NonePatents in suitUS 5,850,482
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.