- Masimo Corporation v. Apple Inc.Institution deniedPTAB · Nov 21, 2023 · IPR2023-00831 · APJ Scott A Daniels · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that the sole design claim would have been obvious over any asserted primary reference.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are not persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of the challenged claim. See 35 U.S.C. § 314(a). Accordingly, we do not institute an inter partes review of the challenged claim. slip op. at 2
- Skill levelSkill level board ownOther
“different, but not incompatible. On one hand, Petitioner proffers a person with a degree in industrial/product design who consults with a person of ordinary skill in the art having an electrical engineering, or similar degree. On the other hand, Patent Owner proffers a person having “a degree in Industrial Design or Mechanical Engineering, and at least two years of professional experience creating Industrial Designs of consumer products.” Prelim. Resp. 3. Considering that this is a design for an electronic “charger,” we find that both parties’ assertions as to the designer of ordinary skill appropriately include engineering and industrial design experience well-suited to a robust understanding of the function and aesthetics of charger devices. And, we do not find it out of the ordinary, as Petitioner contends, that a designer of ordinary skill would have collaborated with other technical professionals in designing such products. We also note that, under the present record, our analysis of this case would be the same under either party’s definition of the designer of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“In this case, a verbal description of the claimed design is helpful to our analysis. Petitioner’s claim construction, particularly as it erroneously calls for certain elements to be “factored out,” is too general, and does not adequately address the overall ornamental visual impression of the claimed charger. See Pet. 14–30. With some exceptions, we find Patent Owner’s claim construction the more persuasive and consistent with the appropriate scope and overall ornamentality of the claimed charger. Prelim. Resp. 3–10. Our claim construction, below, is based on, and paraphrased to some extent, from Patent Owner’s proposed construction: Considering the overall visual impression of the claimed charger as shown in Figures 1–11 of the ’131 patent, the charger has an overall appearance of a compact ice hockey puck shape having a top face with a circular recess that evokes a contemporary appearance. The claimed design includes an overall cylindrical shape, with a circular shape that is visible in plan and bottom views. The top face is dominated by a prominent circular recess that is inset relative to a flat ring having a distinct proportional width relative to the circular recess. The overall cylindrical shape has a distinctive ratio of width (e.g., diameter) to height that, as shown in the figures of the claimed design, evoking the overall appearance of a compact ice hockey puck shape. The overall cylindrical shape includes non-orthogonal transitional edges (e.g., beveled or curved edges) between the sidewall and the top and bottom faces which contributes to the charger’s overall compact ice hockey puck appearance. The featureless flat bottom surface and sidewall are shown as continuous, unbroken, and uninterrupted by features that distract from the continuity of the design, and also contribute to the charger’s overall compact ice hockey puck appearance.” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“’131 patent compared with Lee, we are persuaded that Lee is not an appropriate primary reference. While we agree that a designer of ordinary skill in the art would have considered the front face of the claimed charger and Lee as similar in appearance, a designer of ordinary skill in the art would consider not just the front face of the designs, but the overall appearance of the designs as a whole. See Borden, 90 F.3d at 1574 (The obviousness “inquiry focuses on the visual impression of the claimed design as a whole and not on selected individual features.”). the front face of the claimed design, but the smooth uninterrupted cylinder walls that seamlessly transition to a flat, planer, bottom surface that is a cleaner and more contemporary appearance from Lee’s stepped sidewall and raised yellow ring on the bottom face of Lee’s charger. The cylindrical characteristics of the claimed design evoke a stocky ice hockey puck shaped appearance different from the Lee’s narrower stacked disc shaped design. We find that the cumulative visually apparent differences of the sidewall, bottom face and overall cylindrical ice hockey puck shaped appearance and proportions of the claimed charger outweigh any similarity of the front faces, and thus we are not persuaded that Lee’s charger is a primary reference “the design characteristics of which are basically the same as the claimed design.” Rosen, 673 F.2d at 391.” slip op. at 37
Claim construction§ 103 obviousness - Masimo Corporation v. Apple Inc.Institution deniedPTAB · Nov 21, 2023 · IPR2023-00807 · APJ Robert L Kinder · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that 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 (2018); see also 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes construing “defining an optically transparent window.” Pet. 8–10. Petitioner proposes that “for a cover to ‘define’ an optically transparent window simply means to allow passage of light to a relevant component through the cover.” Id. at 10. Patent Owner “does not object to the constructions proposed by Petitioner at this time.” Prelim. Resp. 18. For purposes of this Decision, and based on the record before us, we determine that no express construction of any term is necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). D. The Alleged Obviousness of Claims 1–3, 5, 6, 8, 10–14, and 16–20 Over” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Petitioner does not explain persuasively why a person of ordinary skill in the art would have reconfigured Kotanagi’s two rear electrodes meant for determining whether a potential between the electrodes decreases (to indicate lack of skin contact) to enable ECG measurements using the particular configuration recited in the claims. We have considered Petitioner’s contentions in light of both Kotanagi and Coppola and Petitioner’s proposed combination appears hindsight driven. The combination requires that a person of ordinary skill in the art selectively pick portions of each reference while also frustrating the purpose of Kotanagi’s electrodes of ensuring skin contact by determining a potential difference.” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,474,483 - Guangdong Laitu Imaging Technology Co., Ltd. v. Really Right Stuff, LLCInstitution deniedPTAB · Oct 25, 2023 · IPR2023-00853 · APJ Sean P O’Hanlon · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim, including due to failures to establish prior art status and claim limitations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“III. CONCLUSION For the foregoing reasons, we are not persuaded that the Petition establishes a reasonable likelihood that Petitioner would prevail in any of its challenges to claims 6–8, 15–17, and 25–28 of the ’037 patent. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted; and FURTHER ORDERED that Petitioner’s Pro Hac Vice Motion to” slip op. at 34
- Adverse judgmentAdverse judgmentOther
“Here, Patent Owner filed a statutory disclaimer of claims 1–5 and 18–24 of the ’037 patent. Prelim. Resp. 7; Ex. 2004. Based on our review of Exhibit 2004 and Office assignment records, we determine that a disclaimer of claims 1–5 and 18–24 of the ’037 patent under 35 U.S.C. § 253(a) has been filed with the Office as of July 27, 2023. Although the disclaimer does not, on its face, indicate the extent of Patent Owner’s interest in the ’037 patent (see Ex. 2004, 2), Office assignment records indicate that Patent Owner owns the entire interest in the ’037 patent. See Ex. 3001, 2. We also note that notice of the disclaimer was included in the September 12, 2023, Official Gazette, Volume 1514, No. 2 at 228. See Ex. 3002, 1. Based on the information in the public record, we find that the disclaimer complies with the above-listed requirements of 37 C.F.R. § 1.321(a). Because claims 1–5 and 18–24 have been disclaimed under 35 U.S.C. § 253(a), in compliance with 37 C.F.R. § 1.321(a), we do not reach challenges to those claims. As a result, the remaining challenged claims are claims 6–8, 15–17, and 25–28 (“the challenged claims”).” slip op. at 6
- Skill levelSkill level board ownDecided for patent owner
“Patent Owner disagrees with Petitioner’s definition, arguing that “a lower level of skill is necessary to understand the mechanical functions of a tripod.” Prelim. Resp. 11. According to Patent Owner, “a hobbyist user of a tripod, such as a hunter or landscape photographer, would have the understanding of a person of ordinary skill in the art. Formal education or years of practical experience building equipment supports are unnecessary to understand the function of a tripod.” Id. Neither of the parties provides the testimony of an expert witness or addresses the factors identified above. The challenged claims are directed to a support, such as a tripod, having an apex that is mountable to a platform and to which equipment to be supported by the tripod may be attached. Based on the teachings of the ’037 patent and the disclosure of the asserted references, we find that the lower level of skill proposed by Patent Owner to be more reasonable and for purposes of this Decision adopt it as our own. We note that we would reach the same conclusion to deny institution under either proposed standard.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner proffers definitions for two terms. Patent Owner argues that “[a]pex should be construed as ‘the structure of the tripod that joins the legs to each other and the rest of the tripod at the legs’ pivot points’” (Prelim. Resp. 11) and “[e]quipment should be limited to devices that may be used either in conjunction with or independent of a support” (id. at 12). For purposes of this Decision, and based on the record before us, we determine that no construction of any term is necessary.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,398,037 - Masimo Corporation v. Apple Inc.Institution deniedPTAB · Sep 27, 2023 · IPR2023-00774 · APJ Josiah C Cocks · IPR · Institution
The Board denied institution because Masimo did not show a reasonable likelihood that the claimed design of claim 1 was unpatentable under any of its three obviousness grounds.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner that the claimed design includes such a feature. We note that there is some potential ambiguity in Petitioner’s construction as to that feature of an outermost continuous circle as between the three colorized figures reproduced on pages 12 and 13 of the Petition (and also reproduced above in § I.C.1). It would seem, however, that the colorized figure on page 13 of the Petition appears to suggest an outer circle in identifying the “Chamfered Edge” and the “Vertical Edge” as claimed features. See Pet. 12. Because we think that the “outermost continuous circle” is a claimed feature of the ’279 patent, we adopt the claim construction that is advanced by Patent Owner as clearly noting the presence of such a feature. See, e.g., supra § I.C.2. We note, however that the outcome of this proceeding would ultimately be the same even were we to adopt Petitioner’s claim construction. That is so because (1) Petitioner’s construction also appears to recognize the outermost continuous circle, and (2) for reasons that are discussed at length below, we conclude that Patent Owner has identified sufficient deficiencies in Petitioner’s proposed grounds that preclude institution irrespective of any claim construction.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In assessing the parties’ views as to level of skill of a designer of ordinary skill in the art, we conclude that they are effectively the same. Indeed, the parties do not identify any material difference between the parties’ proposed assessment. Nevertheless, for clarity and completeness, we adopt Petitioner’s proposed assessment. We note, however, that were we to adopt Patent Owner’s assessment, the outcome of this Decision would be the same.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“those portions. For instance, as noted by Patent Owner (see, e.g., Prelim. Resp. 30–33) the arc-shaped portions of the ’279 patent design are thinner than those of Paulke’s Figure 1G, and the spacing of the arc-shaped portions in the ’279 patent is noticeably smaller than in Paulke. That enlarged spacing in Paulke eliminates any appearance of an outer continuous circle formed by the outer ring of the arc-shaped portions, which is present in the design of the ’279 patent. In that respect, we find credible Patent Owner’s argument that “Paulke’s features provide an appearance of two separate, opposed shapes that differs prominently from the ’279 patent’s arches that evoke an overall concentric circle appearance.” Prelim. Resp. 31 (citing Ex. 2001 ¶¶ 64). Additionally, the orientation of the arc-shaped portions in Paulke is rotated 90 degrees from that of the ’279 patent.5 In our view, the above-noted differences in overall appearance as between Paulke and the ’279 patent convey that Paulke is not “basically the same” as the claimed design of the ’279 patent so as to be regarded as a proper Rosen reference. See In re Rosen, 673 F.2d at 391.” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We find persuasive Patent Owner’s arguments, and the authority underlying those arguments, in casting doubt as to the propriety of the reasoning for combining Mendelson and Chung with Paulsen that are divorced from consideration of ornamental or visual appearance.” slip op. at 29
Claim construction§ 103 obviousness - Pro-Dex, Inc. v. Intelligent Automation Design LLCInstitution deniedPTAB · Jul 19, 2023 · IPR2023-00218 · APJ Kristen L Droesch · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of proving claims 1–8 unpatentable over the asserted prior-art grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“III. CONCLUSION For the foregoing reasons, we determine there is not a reasonable likelihood that Petitioner would prevail in showing at least one of the challenged claims of the ’683 Patent is unpatentable. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition is denied, and no inter partes review is instituted.” slip op. at 32
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. 35 U.S.C. § 112 ¶ 6. Construing a means-plus-function claim term is a twostep process. First, the claimed function must be identified, followed by a determination of what structure, if any, disclosed in the specification corresponds to the claimed function. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1351 (Fed. Cir. 2015) (en banc) (citing Noah Sys. Inc. v. Intuit Inc., 675 F.3d 1302, 1311 (Fed. Cir. 2012).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We are not persuaded that Hosokawa discloses, teaches, or suggests “determining a time when the torque reaches a maximum by an average means for determining an average value as a function of a current value and a new value, thereby determining the optimum point of grip,” as recited in claim 1. As explained above in Section II.A., consistent with Petitioner’s proposed construction, we construe this claim term as an algorithm that causes a microprocessor to perform the following steps: averages the torque signal in the microprocessor using the formula: (Current Valuex9.9+New Value*0.1)/10 = New Current Value; monitors the average torque/current using the microprocessor; and determines when a decrease in current, corresponding to a drop in torque, is detected, as well as equivalents thereof. Petitioner’s assertions regarding the teachings of Hosokawa, however, fail to address how or where Hosokawa discloses, teaches, or suggests an algorithm that causes a microprocessor to determine when a decrease in current, corresponding to a drop in torque, is detected. See Pet. 21–25. In particular, Petitioner does not direct us to where Hosokawa discloses, teaches, or suggests an algorithm that causes a microprocessor to determine when a decrease in current is detected. See id. Petitioner’s contentions regarding Hosokawa merely address determining a decrease in the torque signal without addressing current. See Pet. 21–23. Based on the record before us, Petitioner does not set forth sufficient argument and evidence to demonstrate that Hosokawa discloses, teaches, or suggests “determining a time when the torque reaches a maximum by an average means for determining an average value as a function of a current value and a new value, thereby determining the optimum point of grip,” consistent with our construction and Petitioner’s proposed construction for this means-plus-function limitation. See Pet. 21–25. As applied by Petitioner, the teachings of Minogue do not remedy the deficiencies of Hosokawa. See Pet. 36–43. Therefore, Petitioner also does not set forth sufficient argument and evidence to demonstrate that the combination of Hosokawa and Minogue teaches or suggests “determining a time when the torque reaches a maximum by an average means for determining an average value as a function of a current value and a new value, thereby determining the optimum point of grip,” in accordance with our construction and Petitioner’s proposed construction for this means-plus-function limitation.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“We agree with Patent Owner’s arguments that Petitioner’s rationale to combine the teachings of Hartung and Minogue is insufficient. The general desirability of reducing signal noise and extracting meaning from physical sensor signals may prompt the addition of any noise reduction signal processing to any system that utilizes physical sensor signals. This general desirability of reducing signal noise and extracting meaning from physical sensor signals, however, fails to sufficiently address why a person of ordinary skill in the art would modify Hartung’s system and method which already includes a Bessel filter for smoothing the measuring signal to further include Minogue’s specific weighted averaging algorithm. The question of “obviousness concerns whether a skilled artisan . . . would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). A rationale to combine should “imply a motivation to pick out those two references and combine them to arrive at the claimed invention.” Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 993–94 (Fed. Cir. 2017). Indeed, it is often necessary to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. KSR, 550 U.S. at 418 (emphasis added). “[K]knowledge of a problem and motivation to solve it are entirely different from motivation to combine particular references.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1373 (Fed. Cir. 2008). Similarly, Petitioner’s assertion that modifying Hartung to include Minogue’s weighted averaging functionality “would have been motivated as a way to help smooth the measuring signal” also lacks sufficient rational underpinning because Petitioner does not explain sufficiently why adding Minogue’s weighted averaging formula to Hartung’s system and method that already includes a Bessel filter for smoothing the measuring signal would be helpful to smoothing the measuring signal. The Petition also does not explain sufficiently how a person of ordinary skill in the art would include Minogue’s weighted averaging formula with Hartung’s system and method that includes a Bessel filter for smoothing the measuring signal. For example, Petitioner does not explain whether Hartung’s Bessel filter smoothed measuring signal would be later processed using Minogue’s averaging formula, or whether Minogue’s averaging formula would be applied first to the measuring signal and then later processed with Hartung’s Bessel filter. Petitioner’s cited declaration testimony of Dr. Klopp largely mirrors Petitioner’s arguments, and, therefore, fares no better than the Petition. Compare Pet. 48–49, with Ex. 1002 ¶¶ 134–136, 191. Like the Petition, Dr. Klopp’s declaration testimony sets forth generic and conclusory statements without explaining why or how the teachings of Hartung and Minogue could be combined, and how any specific combination would operate. “[C]onclusory expert testimony does not qualify as substantial evidence.” TQ Delta, LLC v. Cisco Sys., Inc., 942 F.3d 1352, 1358–59 (Fed. Cir. 2019). The Federal Circuit has found that, when “[t]he expert failed to explain how specific references could be combined, which combination(s) of elements in specific references would yield a predictable result, or how any specific combination would operate or read on the asserted claims,” the “expert’s testimony on obviousness was essentially a conclusory statement.” ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1327 (Fed. Cir. 2012); see also In Touch Techs., Inc. v. VGO Commc’ns, Inc., 751 F. 3d 1327, 1353–54 (Fed. Cir. 2014) (finding the expert testimony “failed to provide any meaningful explanation for why one of ordinary skill in the art would be motivated to combine these references at the time of this invention.”). In summary, based on the record before us, Petitioner does not set forth sufficient articulated reasoning with rational underpinning to support its argument that “it would have been obvious to a [person of ordinary skill in the art] to modify Hartung to include Minogue’s weighted averaging functionality (including the weighted averaging formula).” Accordingly, there is not a reasonable likelihood that Petitioner would prevail in showing that claim 1 and claims 2–5, dependent therefrom, are unpatentable as obvious over Hartung and Minogue.” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,091,683 - Toyota Motor Corp. v. Intellectual Ventures II LLCInstitution deniedPTAB · Jan 3, 2023 · IPR2022-01127 · APJ Scott A Daniels · IPR · Institution
The Board denied institution because Toyota did not show a reasonable likelihood that any challenged claim was unpatentable, including because Peisa did not disclose selecting data from fewer than all radio bearers.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), 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.” Upon consideration of the arguments and evidence presented by Petitioner, we are not persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we do not institute an inter partes review of the challenged claims.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The following limitation 1[g], however, provides that “in the first iteration . . . data is selected from a subset of the plurality of radio bearers.” Id. at 14:10–11 (emphasis added). This clause does not simply reiterate “the plurality of radio bearers,” but expressly adds “a subset.” The word “subset” plainly modifies “a plurality of radio bearers,” and must have some limiting meaning. For example, if we were to interpret “subset” as encompassing all or less than all of the radio bearers as Petitioner asserts, than the word, i.e., limitation, “subset” is entirely unnecessary, given that the claim already provides such broader meaning. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions that render phrases in claims superfluous). See Bicon Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (“[C]laims are interpreted with an eye toward giving effect to all terms in the claim”). Indeed, if “a subset” can include data selected from all the radio bearer’s then Petitioner’s interpretation reads the term “subset” essentially, if not entirely, out of the claim.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“This argument and Dr. Akl’s testimony is problematic because it does not explain technically, or logically, why input flows that transmit less than “a determined fair distribution” are “non-selected.” Neither the arguments in the Petition, nor Dr. Akl’s testimony, fully address this particular jump in logic. Even if the input flow transmits less than its fair distribution of bandwidth, (and a backlog counter is incremented to reflect that the input flow has buffered data that was not transmitted), this does not explain that a particular radio bearer is excluded from being allocated bandwidth resources such that it is “non-selected,” i.e., that resources are applied only to less than all of the radio bearers. The Petition even tacitly acknowledges that each input flow in Peisa transmits data, explaining that “[w]hen the scheduling algorithm does reach step 445 in the first iteration, it will ‘update’ the ‘backlog counters’ for each input flow that did not get to transmit all of its data during the first iteration.” Id. at 49 (citing Ex. 1004, 9:1–34).” slip op. at 26
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“Apart from “a processor,” Petitioner does not discuss or analyze any additional limitations, including limitations 1[g] and 8[h], with respect to obviousness. See Pet. 63 (“Thus, the “processor” and ‘processor configured to . . .’ limitations of claims 1 and 8 would have at least been obvious based on Peisa.”). Petitioner relies on its evidence and arguments with respect to ground 1 for the remainder of the obviousness ground. See id. (The Petitioner states “given the above-discussed disclosures of Peisa in Ground 1 for the other limitations of claims 1–4, 6–11 and 13–14, Peisa would have at least rendered obvious claims 1–4, 6–11 and 13–14) (citing Ex. 1003 ¶¶ 169–73). Petitioner’s obviousness ground based on Peisa, thus does not provide persuasive evidence or arguments that a person of ordinary skill in the art would have understood Peisa to disclose the limitations in limitations 1[g] and 8[h]. Accordingly, based on the arguments and evidence of parties on the record before us, we determine that Petitioner has not established a reasonable likelihood of showing any of the challenged claims as obvious over Peisa.” slip op. at 31
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,292,138 - Viken Detection Corporation v. American Science And Engineering, Inc.Institution deniedPTAB · Dec 16, 2022 · PGR2022-00047 · APJ Carl M Defranco · PGR · Institution
The Board denied institution because Viken did not show that any of claims 1–22 was more likely than not unpatentable for lack of written description or enablement.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“We apply the claim construction standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). That is, “the words of a claim ‘are generally given their ordinary and customary meaning’ . . . that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1312–13; see also 37 C.F.R. § 42.200(b). Viken asserts that “the only terms that need construction are ‘a first X-ray source,’ ‘a second X-ray source,’ and ‘a third X-ray source’ of claim 1.” Pet. 20. According to Viken, the “X-ray sources of claim 1 should be construed to be ‘a first backscatter X-ray source,’ ‘a second backscatter X-ray source,’ and ‘a third backscatter X-ray source,’ respectively,” because one skilled in the art “would understand these sources to be backscatter sources in view of the intrinsic evidence (claims and specification).” Id. at 21 (citing Ex. 1012 ¶ 95). In particular, Viken asserts “[t]he only sources paired with backscatter detectors in the ’783 patent are backscatter sources.” Id. at 22 (citing Ex. 1012 ¶¶ 88, 95). We disagree, as discussed below in connection with Viken’s first ground.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Viken asserts that a person having ordinary skill in the art would be “a person with [a] Ph.D. in physics or similar discipline and at least two years of experience working with an interdisciplinary team designing and creating systems involving penetrating radiation sources and detectors.” Pet. 9 (citing Ex. 1012 ¶ 20). At this stage, ASE does not contest that formulation of the level of skill in the art. Nor do we discern any reason to question Viken’s formulation, as it appears consistent with the level of skill reflected in the ’783 patent and the prior art of record. We, therefore, apply Viken’s formulation for purposes of determining whether to institute.” slip op. at 8
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable
“Viken is mistaken on both counts. First, we disagree with Viken’s assertion that the claims are limited to a backscatter-only imaging system. Nor do we agree with Viken’s assertion that the Specification is limited to describing only a combined transmission/backscatter imaging system. We address each of these assertions in turn.” slip op. at 9
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)EnabledNot shown unpatentable
“G. Ground 5 – Enablement of System that is not a Combination Viken asserts that “claims 1–22 of the ’783 patent are invalid for failing to comply with the enablement requirement of 35 U.S.C. § 112(a) because the specification does not enable a two-plane backscatter-only system.” Pet. 41. Viken’s non-enablement assertions fail for the simple reason that they are premised on the same improper assumptions discussed above with respect to Viken’s assertions that claim 1 is limited to a backscatter-only imaging system. As discussed above in section II.C., the claims of the ’783 patent are not so limited. Also, as discussed above in section II.D, the Specification of ’783 patent provides adequate written description support for an X-ray imaging system that includes two planes. Given the high level of skill in the art based on Viken’s formulation—“a person with [a] Ph.D. in physics or similar discipline and at least two years of experience working with an interdisciplinary team designing and creating systems involving penetrating radiation sources and detectors” (Pet. 9 )— and given Viken’s improper reading of limitations into the claims in alleging lack of enablement, we are not persuaded that one skilled in the art would be unable to make or use the invention as claimed.” slip op. at 20
Claim construction§ 112 disclosurecites PhillipsPatents in suitUS 11,143,783 - Abbott Diabetes Care Inc. v. Dexcom, Inc.Institution deniedPTAB · Nov 3, 2022 · IPR2022-00917 · APJ Frederick C Laney · IPR · Institution
The Board denied institution on all challenged claims and grounds because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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) (2018). The Board determines whether to institute a trial on behalf of the Director. 37 C.F.R. § 42.4(a). A decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition.” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018). For the reasons set forth below, we determine that Petitioner has not demonstrated that there is a reasonable likelihood that at least one of the challenged claims is unpatentable. Accordingly, we do not institute an inter partes review of the challenged claims in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art at the relevant time would have had a “bachelor’s degree in biomedical engineering, mechanical engineering, chemical engineering, or materials science and engineering (or a related or equivalent field), and two or more years of experience researching, developing, designing, and/or evaluating (or supervising the same) medical devices for measuring analyte levels, e.g., analyte sensors, or equivalent experience.” Pet. 12 (citing Ex. 1003 ¶¶ 17–21). Patent Owner does not dispute or address this characterization of the skill level of an artisan in the relevant field. See generally Prelim. Resp. On this record, Petitioner’s proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’452 patent and the asserted prior art references. Okajima, 261 F.3d at 1355. For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“given their plain and ordinary meaning.” Pet. 30. Presumably because the plain meaning applicable to all of the claim terms in the ’452 patent is readily apparent, Petitioner does not provide any particular construction for any of the claim terms. See generally id. Patent Owner likewise offers no particular construction for any of the claim terms. See generally Prelim. Resp. Patent Owner does argue, however, that the claimed inventions (specifically, independent claims 1, 19, and 62) are distinguishable from the various structural configurations Petitioner relies upon in the prior art when the plain meaning of “over” and “at least partially surrounds” are applied appropriately. See Prelim. Resp. 39–46. Thus, rather than disputing the meaning Petitioner proposes for the claim terms, Patent Owner disputes whether Petitioner properly applied the plain meaning of all the claim terms in the unpatentability contentions that the Petition presents. Claims are construed only to the extent necessary to resolve a dispute. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Here, both parties rely on the plain and ordinary meaning for all of the terms used in the claims challenged in the Petition and neither party suggests a particular meaning beyond what is clearly conveyed by the claim terms in the context of the ’452 patent. Therefore, we need not construe expressly any of the claim terms.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Petitioner has not shown sufficiently that Cheney/Lord discloses a sealing member that is at least partially located over the contact holder. Cheney’s Figure 2 and 3 show connector block 26, which Petitioner alleges is a sealing member, as being supported solely by its sides within aperture 40 of housing member 34, which Petitioner alleges is a contact holder, and no portion of the connector block 26 is above or over any portion of housing member 34. Petitioner has not demonstrated sufficiently that the plan and ordinary meaning of the term “over” in the context of the ’452 patent would have been understood to encompasses such a configuration.” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,980,452 - Abbott Diabetes Care Inc. v. Dexcom, Inc.Institution deniedPTAB · Nov 3, 2022 · IPR2022-00918 · APJ Frederick C Laney · IPR · Institution
The Board denied institution on all challenged claims because the petition did not show a reasonable likelihood that any challenged claim was unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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) (2018). The Board determines whether to institute a trial on behalf of the Director. 37 C.F.R. § 42.4(a). A decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition.” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018). For the reasons set forth below, we determine that Petitioner has not demonstrated that there is a reasonable likelihood that at least one of the challenged claims is unpatentable. Accordingly, we do not institute an inter partes review of the challenged claims in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts, with the support of its expert, that a person of ordinary skill in the art at the relevant time would have had a “bachelor’s degree in biomedical engineering, mechanical engineering, chemical engineering, or materials science and engineering (or a related or equivalent field), and two or more years of experience researching, developing, designing, and/or evaluating (or supervising the same) medical devices for measuring analyte levels, e.g., analyte sensors, or equivalent experience.” Pet. 11 (citing Ex. 1003 ¶¶ 17–21). Patent Owner does not dispute or address this characterization of the skill level of an artisan in the relevant field. See generally Prelim. Resp. On this record, Petitioner’s proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’452 patent and the asserted prior art references. Okajima, 261 F.3d at 1355. For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that, for its Petition, all claim terms “should be given their plain and ordinary meaning.” Pet. 27. Presumably because the plain meaning applicable to all of the claim terms in the ’452 patent is readily apparent, Petitioner does not provide any particular construction for any of the claim terms. See generally id. Patent Owner likewise offers no particular construction for any of the claim terms. See generally Prelim. Resp. Patent Owner does argue, however, that the claimed inventions (specifically, independent claim 41) are distinguishable from the various structural configurations Petitioner relies upon in the prior art when the plain meaning of “over” and “at least partially surrounds” are applied appropriately. See Prelim. Resp. 16–31. Thus, rather than disputing the meaning Petitioner proposes for the claim terms, Patent Owner disputes whether Petitioner properly applied the plain meaning of all the claim terms in the unpatentability contentions that the Petition presents. Claims are construed only to the extent necessary to resolve a dispute. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Here, both parties rely on the plain and ordinary meaning for all of the terms used in the claims challenged in the Petition and neither party suggests a particular meaning beyond what is clearly conveyed by the claim terms in the context of the’452 patent. Therefore, we need not construe expressly any of the claim terms.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“We find merit in Patent Owner’s arguments. When considering the disclosures of Cheney, Lord, and Shah in their entirety, as we must, we are not persuaded Petitioner has identified sufficiently a rational underpinning that supports the reasoning for why a skilled artisan would have modified Cheney/Lord in the manner claimed. Petitioner proposes modifying Cheney/Lord by adding a sealing layer, such as the one Shah discloses, to the opposite side of the sensor proximal segment 20 that is connected to connector block 26 to further enhance the seal around the sensor and provide the sensor additional protection against moisture. At first glance this may seem like a valid reason, but further inspection of Cheney, Lord, and Shah demonstrates that those references provide no evidentiary support for the alleged reason. Cheney/Lord describe the sensor proximal segment 20 as being a flexible thin film sensor including elongated thin film conductors embedded or encased between upper and lower layers of insulative material, which has openings for exposing the conductive contact pads 22 that electrically interconnect with the corresponding connective strips 40 in connector block 26, which sealingly engages with sensor proximal segment 20 to hermetically seal the contact pads against moisture ingress. Ex. 1006, 2:11– 23, 3:16–24, 3:34–40, 3:51–4:3; Ex. 1005, 1:33–42, 3:45–57. We find nothing in Cheney/Lord that even suggests a skilled artisan would have had a need for improving the sealing characteristics of the insulative material on the side of the sensor proximal segment 20 that is opposite of the side connected to connector block 26. On the contrary, Cheney/Lord teaches that a hermetic seal can be created by connecting connector block 26 to only the side of the sensor proximal segment 20 with exposed conductive contact pads 22; Cheney/Lord teaches that the other side is already fully embedded or encased within an insulative material. Shah is no more availing as evidence supporting Petitioner’s reasoning. Rather than suggesting a need to further enhance the seal covering the sensor proximal segment 20 on the side opposite of the side with exposed conductive contact pads 22, Shah teaches that it sealing layer 25 is intended “to seal the location where the needle penetrates” mounting base 10 to reach the infusion site and provide “a more sanitary infusion site by keeping the infusion site insulated.” Ex. 1019 ¶ 39, Figs. 2, 3B. As Patent Owner correctly argues, Petitioner’s proposed modification would completely thwart the ability of sealing layer 25 to perform that intended function because the sensor proximal segment 20 is located a significant distance away from the needle penetration area, thus, preventing sealing layer 25 from offering any insulating protection to the infusion site. And contrary to suggesting adding a sealing layer to the unexposed side of the sensor proximal segment 20, Shah suggests there is no importance to having a sealing layer over the sensor’s unexposed side by stating that sealing layer 25 “may be located so that it is only covering the needle insertion area.” Ex. 1019 ¶ 39 (emphasis added). Mr. Leinsing also offers little, if any, support to Petitioner’s reasoning. In fact, the declaration of Mr. Leinsing is largely duplicative of the contentions Petitioner argues in the Petition. Compare Pet. 60–64 with Ex. 1003 ¶¶ 376–388. Most notably, Mr. Leinsing does not even suggest (let alone provide a reasoned basis to show) a skilled artisan would have appreciated the need to further tighten/enhance the seal above the sensor and connector block in Cheney/Lord and provide additional protection of the sensor/connector against moisture; instead, Mr. Leinsing simply states “it would have been obvious to use the sealing layer of Shah on the opposite side of the sensor from Cheney/Lord’s connector block to further tighten/enhance the seal around the sensor and thus provide additional protection of the sensor/connector against moisture.” Ex. 1003 ¶ 386. As a result, we give little persuasive weight to the testimony of Mr. Leinsing. Therefore, we find Petitioner has not demonstrated sufficiently a reasonable likelihood of proving that Cheney/Lord in view of Shah discloses a seal member that “at least partially surrounds the electrical contact and at least a portion of the transcutaneous glucose sensor when the transcutaneous glucose sensor is operably connected to the sensor electronics,” as recited in independent claim 41. Furthermore, as noted above, Petitioner’s contentions regarding the Lord/Shah combination is substantively the same and, as such, the same reasons and result apply.” slip op. at 29
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,980,452 - Toyota Motor Corp. v. Intellectual Ventures II LLCInstitution deniedPTAB · Oct 26, 2022 · IPR2022-00710 · APJ Frederick C Laney · IPR · Institution
The Board denied institution on claims 1–20 because the Petition did not show a reasonable likelihood that either Ikeda or Nakajima disclosed the limitations of independent claims 1, 9, and 15.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“whether an individual asserted fact is indisputable or whether a preponderance of the evidence supports Petitioner. Our review is to determine whether the totality of the information presented in the Petition and Preliminary Response shows that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. For the above reasons, we determine Petitioner has not established a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim of the ’158 patent. Therefore, we deny inter partes review of the ’158 patent on all challenged claims and all grounds asserted in the Petition. See 35 U.S.C. § 314(a). IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of the ’158 patent is denied.” slip op. at 31
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, and based on the current record, we adopt Petitioner’s characterization of the level of skill for one of ordinary skill in the art, except we decline to adopt “at least,” as that language is vague and open-ended. However, we note Patent Owner’s proposed characterization of a skilled artisan is not meaningfully different than the one proposed by Petitioner without the “at least” language. Because we find the parties’ characterizations to be consistent with the ’158 patent and the asserted prior art, we apply in our analysis below Petitioner’s characterization, as modified by the Board, for the level of ordinary skill in the art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“phrase “wherein each optics component of the plurality of optics components is configured to pass light to a sensor of the plurality of sensors” requires each optics component to pass light separately to a distinct sensor of the plurality of sensors.6 Ex. 1001, 25:34–36. This is so because the phrase expressly singles out “each optics component” from “the plurality of optics components” and associates it with passing light to “a sensor” that is 6 In the context of the ’158 patent, a sensor may be an array of photo-detectors and multiple sensors may be formed on a single semiconductor substrate or chip. Ex. 1001, code (57), 4:18–21, 4:67–5:3, 7:17–39, 11:62– 676, 14:45–47, 15:46–65, 16:8–15, Figs. 2, 3, 9, 14, 15. distinguished from “the plurality of sensors.” Id. (emphasis added). As a result, claim 1 requires each optics component to have a configuration that allows it to pass light separately to an individual sensor distinct from the other sensor(s) in the plurality of sensors.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)
“We agree. For the reasons discussed above (supra §II.C.1), “each optics component of the plurality of optics components is configured to pass light to a sensor of the plurality of sensors,” as recited in claim 1, requires each of the plurality of optics components to be configured to pass light separately to a distinct sensor of the plurality of sensors and cannot rely on a common optics component to pass light to all of the sensors. Although Petitioner provides little guidance, the only two structures in Figure 11 of Ikeda that can even arguably be optics components “configured to pass light” are lens 1 and prism 23. And Ikeda discloses those structures as functioning as a single unit that is common to the three disclosed sensors. See Ex. 1005, 11:62–12:1. As such, Ikeda only discloses a single optical component/unit configured to pass light to a plurality of sensors, rather than a plurality of optical components/units that are each able to pass light to their respective sensor(s) out of the plurality of sensors. In fact, the only structure included in Figure 11 that Petitioner’s expert, Dr. Bovik, suggests is configurable to pass light to a sensor is the lens. See Ex. 1004 ¶¶ 39–41, 49, 66. For example, Dr. Bovik describes that, during operation of the device Ikeda discloses, the light from an object enters lens 1, which then passes the light through filters to projects the light upon an image sensing device. Id. ¶ 39. Although the Petition and Dr. Bovik lump “a lens 1, a prism 23, optical low-pass filters 2, and a color filter 20 (all purple)” together and refer to them collectively as “provid[ing] a ‘light path’ to pass light (yellow) from an object image to be ‘projected upon the first, second, and third image sensing devices 18, 3, and 19’” (Pet. 16, Ex. 1004 ¶ 66), Ikeda suggests that lens 1 is the only structure configured to pass light (i.e., establish the light path) to a sensor. This is evidenced by the fact that Ikeda describes the prism, optical low-pass filters, and a color filter as all being “provided at the intermediate position of the light path” that begins at lens 1. Ex. 1005, 13:34–38, 13:59– 63 (emphasis added). In order for the prism, optical low-pass filters, and a color filter to be at an intermediate position of the light path, the light path must necessarily have been established before reaching them. Consistent with this understanding, Dr. Bovik only describes lenses as being configurable to pass light to a sensor (i.e., to zoom and focus incident light); the diaphragms, irises, and neutral density (ND) filters are described as “varying the amount of incident light” that has been passed; the optical low pass filters are described as “combat[ing] high-frequency moiré patterns” in the light that has been passed; and the color filters and filter arrays are described as “filtering specific wavelengths, or colors” of light that has been passed. Ex. 1004 ¶ 40. Therefore, because Ikeda only discloses a single optical component” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 9,232,158
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.