• One World Technologies, Inc., D/B/A Techtronic Industries Power Equipment v. Chervon (HK) LimitedNo claims unpatentable
  PTAB · Nov 3, 2021 · IPR2020-00888 · APJ Alyssa A Finamore · IPR · Final written decision

  Claims 1–12, 15–17, and 19–21 were not shown unpatentable because the asserted §103 combinations lacked persuasive support for the claimed safety control devices.

  RulingsFinal written decision

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

    “lawnmower and Nakano’s control device that disables the motor when the telescoping tubes are partially collapsed is premised on the safety issue of a user getting too close to the blade path when the user rotates Reichart’s handle between the in-use and storage positions. Even if we agree with Petitioner that this safety issue exists, it is the rotation, not the telescoping, of the handle that causes a user to get too close to the blade path. Reichart discloses the shortest length of the handle in the in-use position maintains minimum spacing “a” with respect to blade circular path 8. Ex. 1007, 4:31–5:5, 6:1–5. Although reducing minimum spacing “a” could bring a user and the operating elements on the handle too close to the blade path, such a reduction is effected by rotating telescopic tube 3 over casing 1, not sliding upper part 3b of telescopic tube 3 relative to lower part 3a. Moreover, as shown in Petitioner’s annotated version of Reichart’s Figure 4, telescoping the handle to a different length would not cause a user to stand in a different position other than the unsafe position shown with the red footprints to rotate the handle between the in-use and storage positions. Given that rotation, not telescoping, of Reichart’s handle brings a user and the operating elements too close to the blade path, we agree with Patent Owner that modifying Reichart’s lawnmower to include Nakano’s control device that activates and deactivates the motor based on the sliding position of the telescopic tubes would not have ensured that the operating elements and the user are a safe distance from the blade path. Petitioner’s rationale for adding Nakano’s control device to Reichart’s lawnmower lacks rational underpinning. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006))).” slip op. at 38

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

    “18 We do not understand Petitioner to be arguing that it would have been obvious to combine hold-to-run control component 30 and the electrical supply contactor associated therewith from Outils’s embodiment shown in Figure 1 with activation actuator 23 and cam 24 of Outils’s embodiment shown in Figure 10. A petitioner must explain why a POSITA would have combined the elements, including those disclosed in separate embodiments described in a single reference. See KSR Int’l Co., 550 U.S. at 418 (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”); In re Stepan Co., 868 F.3d 1342, 1345–46 n.1 (Fed. Cir. 2017) (“Whether a rejection is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful . . . .”). Petitioner does not provide any such explanation, reinforcing our understanding that Petitioner relies on the position that a POSITA would have understood the embodiment of Figure 10 to include, without modification, hold-to-run control component 30 controlling the electrical supply contactor from Figure 1. electrical supply contactor. Ex. 1014, 8:22–9:13.19 Similarly, Petitioner does not direct us to, nor do we discern, any depiction associated with Outils’s Figure 10 of a hold-to-run control component connected to an electrical supply contactor.” slip op. at 44

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerGranted

    “v. Capella Photonics, Inc., our jurisdiction to consider a petition does not require a “correct” identification of all RPIs in a petition. IPR2015-00739, Paper 38, 6 (PTAB Mar. 4, 2016) (precedential); see also Blue Coat Sys., Inc. v. Finjan, Inc., IPR2016-01444, Paper 11, 10 (PTAB July 18, 2017) (“Evidence [of failure to identify all RPIs] is, at best, suggestive of an issue that is not jurisdictional.”). The Federal Circuit agrees that § 312(a)(2) is not jurisdictional. See Mayne Pharma Int’l Pty. Ltd. v. Merck Sharp & Dohme Corp., 927 F.3d 1232, 1240 (Fed. Cir. 2019) (“[I]f a petition fails to identify all real parties in interest under § 312(a)(2), the Director can, and does, allow the petitioner to add a real party in interest.” (quoting Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364, 1374 n.9 (Fed. Cir. 2018) (en banc))). Accordingly, a petitioner may amend its mandatory notices to add a RPI and still maintain its original filing date. See, e.g., Adello Biologics LLC v. Amgen Inc., PGR2019-00001, Paper 11, 5 (PTAB Feb. 14, 2019) (precedential) (authorizing pre-institution update to Mandatory Notices to add a RPI); Proppant Express Investments, LLC v. Oren Techs., LLC, IPR2017-01917, Paper 86, 7 (PTAB Feb. 13, 2019) (precedential) (“The Board may, under 35 U.S.C. § 312(a), accept updated mandatory notices as long as the petition would not have been time-barred under 35 U.S.C. § 315(b) if it had included the real party in interest.”). In determining whether to permit a petitioner to amend its mandatory notices to add a RPI while maintaining the original filing date, we consider “whether there have been (1) attempts to circumvent the § 315(b) bar or estoppel rules, (2) bad faith by the petitioner, (3) prejudice to the patent owner caused by the delay, or (4) gamesmanship by the petitioner.” Proppant, IPR2017-01917, Paper 86 at 6–7.” slip op. at 59

  • ExcludeGranted

    “The moving party has the burden of proof in showing it is entitled to the requested relief. 37 C.F.R. § 42.20(c). The standard for granting a motion to seal is “good cause.” 37 C.F.R. § 42.54. “The ‘good cause’ standard for granting a motion to seal reflects the strong public policy for making all information in an inter partes review open to the public.” Argentum Pharm. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 at 3 (PTAB Jan. 19, 2018) (informative).” slip op. at 64

  Patent outcomesUS 10,070,588 not shown unpatentable
  § 103 obviousnesscites KSR
  Patents in suitUS 10,070,588
• One World Technologies, Inc., D/B/A Techtronic Industries Power Equipment v. Chervon (HK) LimitedNo claims unpatentable
  PTAB · Nov 3, 2021 · IPR2020-00887 · APJ Alyssa A Finamore · IPR · Final written decision

  Claims 1–20 were not shown unpatentable because the cited combinations failed to establish the claimed control devices and a reason to combine the teachings.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedOther

    “As set forth in our Trial Practice Guide12, there is no requirement of a perfect match between a declarant’s experience and the relevant field. CTPG 34 (citing SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010)). We generally permit testimony where the declarant’s scientific, technical, or other specialized knowledge will help the Board understand the evidence or determine a fact in issue. Id. (citing Fed. R. Evid. 702(a)). Mr. Smith has a Bachelor of Science degree in Mechanical Engineering and is a Certified Safety Professional in comprehensive practice. Ex. 2027 ¶¶ 3, 5. Mr. Smith is President of Alpine Engineering & Design, Inc., and has over thirty years of experience with mechanical design, including the design of lawnmower controls. Id. ¶ 6. Given his education in mechanical engineering and his experience with mechanical design, we find Mr. Smith’s testimony may be helpful in deciding factual issues in this proceeding. Moreover, when assigning weight to a declarant’s testimony, we consider the underlying facts or data upon which the testimony is based. CTPG 40–41. In our analysis of the asserted grounds of unpatentability, we weigh Mr. Smith’s testimony accordingly.” slip op. at 26

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner contends a POSITA “would have had at least a bachelor’s degree in mechanical engineering, electrical engineering, or similar technical field, with at least three years of relevant product design experience.” Pet. 12–13. Petitioner further contends “[a]n increase in experience could compensate for less education.” Id. at 13 (citing Ex. 1003 ¶ 46). Patent Owner adopts Petitioner’s proposed level of ordinary skill in the art exclusively for this proceeding. PO Resp. 5. We find Petitioner’s proposal is consistent with the level of ordinary skill reflected in the asserted references, which involve various mechanical and electrical aspects of gardening tools such as lawnmowers. For instance, Reichart discloses a lawnmower having a handle that is adjustable to different heights to accommodate users of varying heights (Ex. 1007, code (57)), and Outils teaches a lawnmower having a safety device that prevents access to the rotating cutting blade (Ex. 1014, code (57)). Accordingly, we adopt Petitioner’s proffered level of ordinary skill in the art.” slip op. at 27

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

    “Petitioner proposes constructions for three claim terms—“power supply circuit” and the related terms “locks” and “unlocks.” Pet. 14–17; Reply 5. Patent Owner “believes that no construction is required for [‘power supply circuit’] because the construction of this term is not relevant to the issues raised herein.” PO Resp. 11; see also Sur-reply 2 (arguing the construction of “power supply circuit” is not relevant to the issues raised in this proceeding). Moreover, for purposes of this proceeding only, Patent Owner does not dispute Petitioner’s proposed constructions for “locks” and “unlocks.” PO Resp. 11. The parties do not dispute the meanings of the claims terms “locks” and “unlocks,” and we agree with Patent Owner that an express construction of the claim term “power supply circuit” is unnecessary to resolve the dispute. For the reasons set forth in our analysis of the asserted grounds of unpatentability, we determine that no claim term requires an express construction for us to ascertain whether Petitioner has shown the challenged claims to be unpatentable.” slip op. at 28

  • BurdenFwd all claims patentableNot shown unpatentable

    “demonstrated Outils teaches or suggests a second control device that unlocks and locks the first control device, as recited in limitation [1f]. Also, as we explain in section III.D.1.b, Petitioner has not persuaded us that a POSITA would have combined the teachings of Reichart and Nakano to result in the claimed subject matter, including limitation [1g]. Petitioner has not proven, by a preponderance of the evidence, that the subject matter of independent claim 1 would have been obvious over Reichart, Nakano, Outils, and 16 CFR 1205. 2. Independent Claim 11 Like independent claim 1, independent claim 11 recites, in pertinent” slip op. at 51

  Patent outcomesUS 9,986,686 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 9,986,686
• One World Technologies, Inc., D/B/A/ Techtronic Industries Power Equipment v. Chervon (HK) LimitedNo claims unpatentable
  PTAB · Nov 3, 2021 · IPR2020-00884 · APJ James J Mayberry · IPR · Final written decision

  Claims 1–13 were not shown unpatentable under four § 103 grounds because the petitioner failed to establish the claimed control system in Outils.

  RulingsFinal written decision

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

    “evidence, and the parties’ arguments and counterarguments, we find that Petitioner fails to demonstrate, by a preponderance of the evidence, that Outils teaches or suggests the subject matter of the control system limitation, including both a first control device and a second control device. We find Petitioner fails to support its position that a person having ordinary skill in the art would have understood that the embodiment depicted in Outils’s Figure 10 includes a hold-to-run control connected to an electrical supply contactor with persuasive evidence. At the outset, we agree with Patent Owner that Petitioner does not argue that it would have been obvious to combine Outils’s disclosure of hold-to-run control component 30 controlling an electrical supply contactor from the embodiment of Figure 1 with the embodiment of Figure 10. That is, we understand that Petitioner contends that a person having ordinary skill in the art would have understood that the embodiment of Outils’s Figure 10 already had a specific type of control device—the hold-to-run control component 30 controlling an electrical supply contactor from the embodiment of Figure 1. See Pet. 36 (indicating that the first control device is Outils’s electrical supply contactor); Reply 7 (“But while the Bowden cable of Figure 1 is replaced in Figure 10, [a person having ordinary skill in the art] would understand Figure 10 must still include a user’s on/off component even though none is illustrated.”); see also Reply 9 (“Thus, [a person having ordinary skill in the art] would have understood Outils’ Figure 10 to include hold-to-run lever 30 . . . and its electric supply contactor from Figure 1”).15” slip op. at 31

  • PTAB / AIA Trials › Real party in interest / privityJoinder, grantedGranted

    “allow the petitioner to add a real party in interest.” (quoting Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364, 1374 n.9 (Fed. Cir. 2018) (en banc)). As such, a petitioner may amend its mandatory notices to add a real party-ininterest and still maintain its original filing date. See, e.g., Adello Biologics LLC v. Amgen Inc., PGR2019-00001, Paper 11, 5 (PTAB Feb. 14, 2019) (precedential) (authorizing pre-institution update to Mandatory Notices to add a RPI); Proppant Express Investments, LLC v. Oren Techs., LLC, IPR2017-01917, Paper 86, 7 (PTAB Feb. 13, 2019) (precedential) (“The Board may, under 35 U.S.C. § 312(a), accept updated mandatory notices as long as the petition would not have been time-barred under 35 U.S.C. § 315(b) if it had included the real party in interest.”) (“Proppant”). In determining whether to permit a petitioner to amend its mandatory notices to add a real party-in-interest while maintaining the original filing date, we consider “whether there have been (1) attempts to circumvent the § 315(b) bar or estoppel rules, (2) bad faith by the petitioner, (3) prejudice to the patent owner caused by the delay, or (4) gamesmanship by the petitioner.” Proppant, Paper 86, 6–7.” slip op. at 44

  • Strike new argumentNot reached

    “B. Patent Owner’s Motion to Strike Patent Owner moves to strike portions of Petitioner’s Reply as “includ[ing] numerous new improper arguments, rationales, and theories.” Paper 43, 1.21 Petitioner opposes. Paper 47. Because, even when considering Petitioner’s Reply as a whole, we conclude that Petitioner fails to demonstrate, by a preponderance of the evidence, that any of the Challenged Claims are unpatentable, we dismiss Patent Owner’s motion as moot.” slip op. at 48

  • ExcludeMotion to exclude, grantedGranted

    “The moving party has the burden of proof in showing it is entitled to the requested relief. 37 C.F.R. § 42.20(c). The standard for granting a motion to seal is “good cause.” 37 C.F.R. § 42.54. “The ‘good cause’ standard for granting a motion to seal reflects the strong public policy for making all information in an inter partes review open to the public.” Argentum Pharm. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 at 3 (PTAB Jan. 19, 2018) (informative).” slip op. at 49

  Patent outcomesUS 9,596,806 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,596,806
• One World Technologies, Inc., D/B/A/ Techtronic Industries Power Equipment v. Chervon (HK) LimitedNo claims unpatentable
  PTAB · Nov 3, 2021 · IPR2020-00886 · APJ Barry L Grossman · IPR · Final written decision

  Claims 1–20 were not shown unpatentable: the Outils, Roelle, and Matsunaga combination did not establish the claimed control system, and the second ground did not cure that deficiency.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “experience could compensate for less education.” Pet. 12 (citing Ex. 1003 ¶ 44). Mr. Reed’s opinion testimony merely repeats Petitioner’s conclusion without any analysis and without disclosing the underlying facts or data on which his opinion is based. Accordingly, his testimony on this issue is entitled to no probative weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). In our Decision to Institute, we adopted Petitioner’s proposed level of skill. Dec. Inst. 36. Patent Owner states that “[f]or purposes of these proceedings only, Patent Owner adopts Petitioner’s proposed level of ordinary skill in the art.” PO Resp. 4. Neither party provides any evidence of the factors listed above that normally inform our determination of the level of ordinary skill. For the purposes of this Decision, based on the prior art, we maintain” slip op. at 24

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

    “1. “Power Supply Circuit” Patent Owner believes that no construction is required for the term “power supply circuit” because “the construction of this term is not relevant to the issues raised herein.” PO Resp. 10. Patent Owner also asserts that the “District Court in the parties’ related district court litigation rejected Petitioner’s proposed construction.” Id. (citing Ex. 2025, 8). Petitioner disputes Patent Owner’s characterization of the District Court’s claim construction. Reply 5. Moreover, Petitioner asserts that the District Court’s construction of “power supply circuit” “would not impact the Petition’s demonstration of the challenged claims’ unpatentability.” Id. We maintain that the determination in our Decision to Institute that we need not construe this term to resolve the dispute before us.” slip op. at 25

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “determine that Patent Owner’s proposed construction of the “accommodating position” phrase, which is a “horizontal position over the main body” (PO Resp. 13) is not supported by the evidence. We agree with Petitioner’s proposed construction that the “accommodating position” phrase is a position relative to the main body for when the gardening tool or mower is not being used (Reply, 6), with a minor clarification. As Patent Owner argues, Petitioner’s proposed construction “is incorrect because it encompasses any handle position when the mower is turned off, and thus reads out the claimed “accommodating position.” Sur-reply 3. Our proposed construction modifies Petitioner’s construction to recognize Patent Owner’s argument. For purposes of this Decision, the phrase “accommodating position relative to the main body” in claims 1 and 11 is given its ordinary and customary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. This meaning is any position of the handle, other than the “secure position,” that prevents the motor from being started by the operation assembly and stops the motor if it is running. This is the construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention.” slip op. at 34

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

    “14 A petitioner must explain why a person having ordinary skill in the art would have combined the elements, including those disclosed in separate embodiments described in a single reference. See KSR, 550 U.S. at 418 (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”); In re Stepan Co., 868 F.3d 1342, 1345–46 n.1 (Fed. Cir. 2017) (“Whether a rejection is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.”). Petitioner does not provide any such explanation, reinforcing our understanding that Petitioner relies on the position that a person having ordinary skill in the art would have understood the embodiment of Figure 10 to include, without modification, hold-to-run control component 30 controlling an electrical supply contactor from Figure 1. light of Outils’s disclosure of control components other than an electrical supply contactor connected to hold-to-run control component 30 in the embodiment of Figure 1; (3) Petitioner’s reliance on 16 C.F.R. Part 1205 to support the understanding of a person having ordinary skill in the art; (4) Petitioner’s reliance on Outils’s disclosure at page 2, lines 24–27, to support the understanding of a person having ordinary skill in the art; and (5) Petitioner’s contention that it would have been obvious to add an operation assembly to the embodiment of Outils’s Figure 10. First, it is undisputed that the text describing Figure 10 does not mention a hold-to-run control component connected to an electrical supply contactor. See Ex. 1014, 8:22–9:13.15 Similarly, Petitioner does not direct us to, nor do we discern, any depiction associated with Outils’s Figure 10 of a hold-to-run control component connected to an electrical supply contactor. Second, in describing the embodiment of Figure 1, Outils discloses that hold-to-run control component 30 can function in one of three different ways. Control 30, through remote control cable 29, can act on (1) a motor brake, (2) a brake coupling, or (3) an electrical supply contactor. See Ex. 1014, 4:5–8; see also Pet. 31 (acknowledging that Outils’s hold-to-run control component 30 “acts on a motor brake, a brake coupling or an electrical supply contactor” (emphasis added)). Neither Petitioner nor Mr. Reed persuasively explains why a person having ordinary skill in the art would have understood the embodiment of Figure 10 to have hold-to-run control component 30 connected to an electrical supply contactor, rather 15 Outils references Figures 9 and 10 at page 7, line 15. This reference is a typographical error. The reference should be to Figures 8 and 9, which include means 4 and actuator 20. See Ex. 1014, 7:15–8:20, Figs. 8, 9; Dec. Inst. 30; Reply 9 n.5. than a motor brake or brake coupling. That is, Petitioner does not provide persuasive evidence supporting the contention that, out of the three possible control devices disclosed as connected to hold-to-run control component 30—a motor brake, a brake coupling, or an electrical supply contactor—a person having ordinary skill in the art would have understood from Outils’s disclosure that the embodiment of Figure 10 specifically includes an electrical supply contactor. There is no persuasive evidence that the embodiment of Figure 10 in Outils, which includes actuator 23 and cam 24, also includes hold-to-run control component 30 and only the electrical contactor to the exclusion of the other two control components. There also is no persuasive evidence, in this embodiment, actuator 23 and cam 24 enable, i.e. unlocks, or disables, i.e., locks, hold-to-run control component 30 and the associated electrical supply contactor from starting the motor, as required by the control system limitation.” slip op. at 48

  Patent outcomesUS 9,826,686 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,826,686
• One World Technologies, Inc., D/B/A/ Techtronic Industries Power Equipment v. Chervon (HK) LimitedNo claims unpatentable
  PTAB · Nov 3, 2021 · IPR2020-00884 · APJ James J Mayberry · IPR · Final written decision

  Claims 1–13 were not shown unpatentable because the evidence did not establish that Outils disclosed or suggested the claimed first and second control devices.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityGranted

    “In determining whether to permit a petitioner to amend its mandatory notices to add a real party-in-interest while maintaining the original filing date, we consider “whether there have been (1) attempts to circumvent the § 315(b) bar or estoppel rules, (2) bad faith by the petitioner, (3) prejudice to the patent owner caused by the delay, or (4) gamesmanship by the petitioner.” Proppant, Paper 86, 6–7.” slip op. at 44

  • Strike new argumentNot reached

    “Patent Owner moves to strike portions of Petitioner’s Reply as “includ[ing] numerous new improper arguments, rationales, and theories.” Paper 43, 1.21 Petitioner opposes. Paper 47. Because, even when considering Petitioner’s Reply as a whole, we conclude that Petitioner fails to demonstrate, by a preponderance of the evidence, that any of the Challenged Claims are unpatentable, we dismiss Patent Owner’s motion as moot.” slip op. at 48

  • ExcludeMotion to exclude, grantedGranted

    “The moving party has the burden of proof in showing it is entitled to the requested relief. 37 C.F.R. § 42.20(c). The standard for granting a motion to seal is “good cause.” 37 C.F.R. § 42.54. “The ‘good cause’ standard for granting a motion to seal reflects the strong public policy for making all information in an inter partes review open to the public.” Argentum Pharm. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 at 3 (PTAB Jan. 19, 2018) (informative).” slip op. at 49

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Not reached

    “Patent Owner argues that “[t]his proceeding should be dismissed because the assigned Administrative Patent Judges are principal officers of the United States and yet were not appointed by the President and confirmed by the Senate” in violation of the Appointments Clause. PO Resp. 52–53. We decline to address Patent Owner’s constitutional challenge except to note that the constitutionality of the appointments of the Administrative Patent Judges was addressed by the U.S. Supreme Court in United States v. Arthrex, Inc., 141 S. Ct. 1970, 1986–87, 1997 (2021).” slip op. at 50

  Patent outcomesUS 9,596,806 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,596,806
• Axonics, Inc. v. Medtronic, Inc.No claims unpatentable
  PTAB · Sep 22, 2021 · IPR2020-00712 · APJ James A Tartal · IPR · Final written decision

  Claims 3–6, 9–12, and 15–18 were not shown unpatentable over Schulman, the Fischell Article, or the Fischell Article combined with Fischell ’260.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentOther

    “We agree with Patent Owner that we should not address the patentability of claims 1, 2, 7, 8, 13, and 14 in this Decision. See PO Resp. 15 n.4. Rather, we treat claims 1, 2, 7, 8, 13, and 14 as if they never existed. See Gunn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (“A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.”). We address the patentability only of the Challenged Claims not disclaimed. See Intel Corp. v. VLSI Tech. LLC, IPR2018-01040, Paper 36, 16 (PTAB Feb. 12, 2020) (“Consistent with other Board decisions in which some, but not all, challenged claims have been disclaimed after institution, we address the patentability only of the remaining claims.” (collecting decisions)).” slip op. at 4

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of the invention “would have had at least a bachelor’s degree in electrical engineering or an equivalent as well as at least five years of experience in the industry working with implantable medical devices such as cardiac pacemakers or defibrillators.” Pet. 8. Patent Owner argues that a person of ordinary skill “would have had at least a bachelor’s degree in a relevant field (e.g., electrical, mechanical, or biomedical engineering) with at least two years of experience with the design of components (e.g., circuitry) for implantable medical devices and associated external devices (e.g., a charging unit),” and that “[m]ore education can substitute for practical experience and vice versa.” PO Resp. 4–5 (citing Ex. 2002 ¶¶ 21–22). Patent Owner further disagrees with Petitioner’s proposed level of skill because it does not specify “experience and background with electronics and circuitry.” Id. at 5. Patent Owner, however, further concedes that the result of this proceeding “would not be different even if Petitioner’s level of skill were to apply.” Id. (citing Ex. 2002 ¶¶ 23–24). The parties did not further address this issue at trial. See generally Pet. Reply; PO Sur-reply. Patent Owner fails to provide any rational explanation or support to show that Petitioner’s proposed level of ordinary skill—a person having a least five years of experience in the industry working with implantable medical devices such as cardiac pacemakers or defibrillators” —corresponds to a person who lacks “experience and background with electronics and circuitry.” Further, we discern no substantial difference between the parties’ proposed definitions of a person of ordinary skill in the art that impacts our determination in this Decision. We, therefore, agree with Patent Owner that our analysis in this case does not turn on which of the parties’ competing definitions of ordinary skill is applied and apply the level of ordinary skill in the art proposed by Petitioner, consistent with the Decision on Institution. See Inst. Dec. 11 (stating that “the ’148 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner” (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001))).” slip op. at 15

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

    “the [S]pecification teaches that the power source can automatically vary its power output based on multiple inputs, where each input is associated with or proportional to “said current passing through said internal battery.” (Ex. 2002 at ¶ 35.) In one example, two separate inputs are utilized in deciding how to vary the power output of the external power source 50: (1) the voltage across rechargeable power source 24; and (2) the charging current through rechargeable power source 24: If no over temperature condition exists, charging unit 50 checks (328) to determine if the voltage across rechargeable power source 24 is over a voltage at which the charging rate should begin to decrease, e.g., 4.05 volts. If the voltage across rechargeable power 24 is greater than 4.05 volts, then charging unit 50 begins to taper charging power (330). If the voltage across rechargeable power source 24 is not over 4.05 volts, charging unit 50 checks (332) to determine whether the charging current through rechargeable power source 24 is over a current rate that is not desirable, e.g., 50 milliamperes. If the charging current is over 50 milliamperes, then the charging power level is decreased (334) by an appropriate, e.g., by 35 milliwatts. (Ex. 1001 at 21:58-22:3, emphasis added.) As described in the passage above, both a voltage across the rechargeable power 8 Patent Owner’s additional citations to cases for the proposition that different claim terms are presumed to have different meanings does not support its arguments. PO Resp. 9–10 (citations omitted). As Petitioner notes, there is no dispute that “value,” “measured voltage,” and “signal proportional to said current” have different meanings. Pet. Reply 5. The issue is whether a single input can satisfy both limitations at issue. utilized to control the operation of the external charging device. A POSITA would understand that each of these two inputs is associated with or proportional to a current passing through the internal power source. (See also Ex. 1001 at 20:65-21:6; Ex. 2002 at ¶ 35.) PO Resp. 11–12. Patent Owner’s argument is persuasively supported by Dr. Mihran, who explains that a person of ordinary skill in the art would have understood the claim language requires two inputs, in part, because the Specification of the ’148 patent “provides support for the use of multiple inputs as a basis to vary power output of the power source as claimed.” Ex. 2002 ¶¶ 33, 35.” slip op. at 23

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Schulman still anticipates” claims 3, 9, and 15.9 Pet. Reply 12–14. Petitioner then proceeds to argue for the first time that features of Schulman correspond to a second input that automatically varies the power output of the external power source. Id. In so doing, Petitioner fails to meet its burden to show in the Petition “[h]ow the challenged claim is to be construed,” but instead relies on Patent Owner to show in its Response to the Petition the proper construction. 37 C.F.R. § 42.104(b)(3). Indeed, Petitioner does not argue, much less show that its “mapping” of the claims to Schulman in the Petition corresponds to two inputs that automatically vary the power output. Petitioner’s Reply is not an opportunity to advance new arguments based on new testimony in an effort to show that challenged claims are unpatentable where the proper claim construction requires additional features, such as two inputs instead of one input, contrary to the position taken by Petitioner in the Petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (stating in regard to inter partes review that “petitioner’s petition . . . is supposed to guide the life of the litigation”); see also Sirona Dental Sys. GmbH v. Institut Straumann AG, 892 F.3d 1349, 1356 (Fed. Cir. 2018) (stating that “[b]ecause an IPR must proceed ‘[i]n accordance with’ or ‘in conformance to’ the petition,” it would “not be proper for the Board to deviate from the grounds in the petition”) (quoting SAS Inst., 138 S. Ct. at 1357)). Patent Owner argues, and we agree, that consideration of arguments raised improperly by Petitioner for the first time in its Reply is unwarranted.” slip op. at 35

  Patent outcomesUS 8,738,148 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,738,148
• Axonics, Inc. v. Medtronic, Inc.No claims unpatentable
  PTAB · Sep 22, 2021 · IPR2020-00680 · APJ James A Tartal · IPR · Final written decision

  Claims 1, 2, 4–6, 8–10, and 12 were not shown unpatentable because the references failed to disclose the separately required inputs or other limitations.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentOther

    “Disclaimer disclaiming claims 3, 7, and 11 of the ’758 patent. PO Resp. 1; Ex. 2007; see also 35 U.S.C. § 253(a) (providing that a patentee may “make disclaimer of any complete claim” in writing with the Patent and Trademark Office, and such disclaimer “shall thereafter be considered as part of the original patent”). Patent Owner asserts that in light of the Disclaimer, claims 3, 7, and 11 are to be “treated as though they never existed.” PO Resp. 14 n.4 (citations omitted). Patent Owner further argues that we should “not address the disclaimed claims in the Final Written Decision.” Id. Petitioner does not dispute the effect of the Disclaimer. See Pet. Reply 13– 26 (arguing that the Challenged Claims not disclaimed are unpatentable). We agree with Patent Owner that we should not address the patentability of claims 3, 7, and 11 in this Decision. See PO Resp. 14 n.4. Rather, we treat claims 3, 7, and 11 as if they never existed. See Gunn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (“A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.”). We address the patentability only of the Challenged Claims not disclaimed. See Intel Corp. v. VLSI Tech. LLC, IPR2018-01040, Paper 36, 16 (PTAB Feb. 12, 2020) (“Consistent with other Board decisions in which some, but not all, challenged claims have been disclaimed after institution, we address the patentability only of the remaining claims.” (collecting decisions)).” slip op. at 4

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of the invention “would have had at least a bachelor’s degree in electrical engineering or an equivalent as well as at least five years of experience in the industry working with implantable medical devices such as cardiac pacemakers or defibrillators.” Pet. 7. Patent Owner argues that a person of ordinary skill “would have had at least a bachelor’s degree in a relevant field (e.g., electrical, mechanical, or biomedical engineering) with at least two years of experience with the design of components (e.g., circuitry) for implantable medical devices and associated external devices (e.g., a charging unit),” and that “[m]ore education can substitute for practical experience and vice versa.” PO Resp. 5 (citing Ex. 2002 ¶¶ 21, 22). Patent Owner further disagrees with Petitioner’s proposed level of skill because it does not specify “experience and background with electronics and circuitry.” Id. at 6. Patent Owner, however, further concedes that the result of this proceeding “would not be different even if Petitioner’s level of skill were to” slip op. at 15

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

    “We disagree with Petitioner’s framing of the issue, which fails to reflect Petitioner’s argument that the limitations at issue are not “separate claim limitations,” because a disclosure of one is necessarily a disclosure of the other. Specifically, according to Petitioner, the Value Limitation merely recites “value” as a genus, and the Measured Current Limitation recites “current” as a species. Pet. Reply 2, 4. Thus, Petitioner concedes its proposed construction renders the Value Limitation superfluous, because, as Petitioner recognizes, under its proposal “when the external power source automatically varies its power output based on ‘a measured current,’ it is also varying its power output based on ‘a value.’” Id. at 4–6. Petitioner is not relying on a single disclosure to satisfy two “separate claim limitations;”” slip op. at 24

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Patent Owner argues, and we agree, that consideration of arguments raised improperly by Petitioner for the first time in its Reply is unwarranted. PO Sur-reply 9–11 (citing Consolidated Trial Practice Guide (November 2019) (“CTPG”) 73 (“Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.”), 74 (“‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing. While replies and sur-replies can help crystalize issues for decision, a reply or sur-reply that raises a new issue or belatedly presents evidence may not be considered.”) (citing Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369– 70 (Fed. Cir. 2016))). Moreover, Patent Owner identified the new arguments advanced by Petitioner, and Petitioner had the opportunity to show where the arguments were raised prior to its Reply. Paper 23, 2; Paper 26, 1–2. Instead of identifying a specific location where the argument was raised in the Petition, Petitioner broadly cites to fifty-five pages of the Petition, none of which suggest in any way that Petitioner contended that claims 1, 5, and 9 required a separate input for “a value” and “a measured current,” much less that any of the asserted references disclosed the same.” slip op. at 35

  Patent outcomesUS 8,457,758 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,457,758
• Axonics, Inc. v. Medtronic, Inc.No claims unpatentable
  PTAB · Sep 13, 2021 · IPR2020-00715 · APJ Alyssa A Finamore · IPR · Final written decision

  The Board held claims 1, 2, 5, 7, 13–15, and 18 not shown unpatentable under either §103 ground because Petitioner did not establish a motivation to combine the references.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “The level of ordinary skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The POSITA is a hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” Id.” slip op. at 13

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

    “B. Claim Construction We interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Furthermore, we expressly construe the claims to the extent necessary to determine whether Petitioner has proven that the challenged claims are unpatentable. 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))). Petitioner argues “a plurality of M tine elements” recited in independent claim 1 and “a plurality of tine elements” recited in independent claim 14 should be construed as “at least two or more structures that mount to the lead body, each structure comprising multiple tines attached to it.” Pet. 20. Patent Owner disagrees with Petitioner’s proposed construction, and also asserts the Board can resolve the dispute in this proceeding without construing these terms. PO Resp. 16–18. We agree with Patent Owner that an express construction of each of the claim terms “a plurality of M tine elements” and “a plurality of tine elements” is unnecessary to resolve the dispute. For the reasons set forth in our analysis of the asserted grounds of unpatentability, we determine that no claim term requires an express construction for us to ascertain whether Petitioner has shown the challenged claims to be unpatentable.” slip op. at 17

  • Expert testimonyPetitioner expert creditedDecided for petitioner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

  Patent outcomesUS 8,036,756 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,036,756
• Axonics, Inc. v. Medtronic, Inc.No claims unpatentable
  PTAB · Sep 13, 2021 · IPR2020-00679 · APJ Alyssa A Finamore · IPR · Final written decision

  Claims 1, 2, 4, 7, 10–12, 14, and 18–24 were not shown unpatentable because Petitioner did not establish a reason to combine the asserted references as proposed.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “Turning to the level of ordinary skill, each party’s proposed level of ordinary skill requires a combination of formal education and experience. Pet. 12 (citing Ex. 1003 ¶ 52); PO Resp. 14 (citing Ex. 2029 ¶¶ 21–22; Ex. 2030 ¶ 64). Patent Owner’s proposed level is higher than Petitioner’s proposed level in that Patent Owner’s proposed level requires a POSITA to either be a physician with at least two years of experience in sacral neuromodulation or a sacral neuromodulation lead designer working in close collaboration with such a physician. PO Resp. 14 (citing Ex. 2029 ¶¶ 21–22; Ex. 2030 ¶ 64). Drs. Slavin and Siegel testify that this requirement for a physician with at least two years of experience in sacral neuromodulation is necessary for the knowledge of human anatomy and surgical procedures involved in sacral neuromodulation lead placement. Ex. 2029 ¶ 24; Ex. 2030 ¶ 66. Mr. Pless, however, testifies that a lead designer developing leads for sacral neuromodulation would have similar knowledge: [O]ne of the things that engineers who develop products for implantation in the body pay attention to is the anatomy, and we had lots of books on anatomy, both, you know, photographic depictions as well as, you know, more schematic. You know, Netter was a great resource for that. And occasionally we would do cadaver studies as well. Ex. 2026, 24:7–15. Although a physician with at least two years of experience in sacral neuromodulation would have knowledge of human anatomy and surgical procedures involved in sacral neuromodulation lead placement, we disagree with Patent Owner that a POSITA must be a physician with at least two years of experience in sacral neuromodulation or a sacral neuromodulation lead designer working in close collaboration with such a physician to have this knowledge. In view of the foregoing, the relevant art is medical leads for sacral neuromodulation. This art is sophisticated and requires knowledge of human anatomy of the sacral area and the surgical procedures involved in sacral neuromodulation. Both lead designers and physicians work in this field. With these considerations, we find a POSITA would have had at least the following two qualifications: (1) a bachelor’s degree, or coursework equivalent, in biomedical engineering, electrical engineering, or mechanical engineering, or a medical degree, and (2) at least two years of experience researching and developing medical leads for sacral neuromodulation. We further find that more education can substitute for practical experience and vice versa.” slip op. at 14

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Regarding Patent Owner’s criticism of Mr. Pless’s testimony as not being grounded in the perspective of a POSITA, our Trial Practice Guide8 explains that there is no requirement between a declarant’s experience and the relevant field. TPG 34 (citing SEB S.A. v. Montgomery Ward & Co., 594 8 USPTO, Patent Trial and Appeal Board Consolidated Trial Practice Guide November 2019, https://www.uspto.gov/TrialPracticeGuideConsolidated (“TPG”); see also Office Patent Trial Practice Guide, November 2019 Edition, 84 Fed. Reg. 64,280 (Nov. 21, 2019) (notifying the public of the availability of the Consolidated Trial Practice Guide). F.3d 1360, 1373 (Fed. Cir. 2010)). We generally permit testimony where the declarant’s scientific, technical, or other specialized knowledge will help the Board understand the evidence or to determine a fact in issue. Id. (citing Fed. R. Evid. 702(a)). Given his education as an electrical engineer and his experience as a medical lead designer (Ex. 1003 ¶¶ 4–10), we find Mr. Pless’s testimony helpful in deciding factual issues in this proceeding. Moreover, when assigning weight to a declarant’s testimony, we consider the underlying facts or data upon which the testimony is based. TPG 40–41. In our analysis of the asserted grounds of unpatentability, we weigh Mr. Pless’s testimony accordingly.” slip op. at 15

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

    “Petitioner argues the claim term “a plurality of tine elements” should be construed as “at least two or more structures that mount to the lead body, each structure comprising of multiple tines attached to the structure.” Pet. 15. Patent Owner disagrees with Petitioner’s proposed construction, and also asserts the Board can resolve the dispute in this proceeding without construing the term. PO Resp. 16–18. We agree with Patent Owner that an express construction of the claim term “a plurality of tine elements” is unnecessary to resolve the dispute. For the reasons set forth in our analysis of the asserted grounds of unpatentability, we determine that no claim term requires an express construction for us to ascertain whether Petitioner has shown the challenged claims to be unpatentable.” slip op. at 16

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

    “Beginning with Petitioner’s reasoning premised on the references solving the same problem as the ’314 patent, Patent Owner argues none of these references solve the same problem as the ’314 patent. PO Resp. 35 (citing Ex. 2029 ¶¶ 76–83). We agree with Patent Owner. Petitioner characterizes the problem addressed in the ’314 patent as “leads adequately stimulating the nerves while limiting electrode migration” (Pet. 22), but the ’314 patent describes a more specific problem. According to the ’314 patent: [T]here remains a need in the art for a permanently implantable electrical sacral nerve stimulation lead that is capable of being passed percutaneously over a guide wire, and/or through the lumen of an introducer from the patient’s skin to locate stimulation electrodes in casual contact with a sacral nerve, that provides acute fixation with muscle and tissue layers posterior to the sacrum, and that can be bent to extend subcutaneously to the neurostimulator IPG without disturbing the fixation so that the stimulation electrodes are less likely to be dislodged during the acute recovery phase and the chronic implantation period. Ex. 1001, 5:34–44 (emphasis added). The ’314 patent addresses the need for a percutaneously implantable lead that is properly and securely positioned to provide sacral nerve stimulation, whereas the references do not. Young addresses placement of an implanted, percutaneously placed electrode system for electrical stimulation of the trigeminal sensory root for treatment of chronic facial pain. Ex. 1010, 73. Gerber contemplates the positioning and securement of an electrode that is implanted in the sacral area via a non-percutaneous surgical procedure. Ex. 1012, 2:9–13. Lindegren addresses the need for a cardiac lead that can be easily detached from the anchoring means and allow the lead to be replaced despite the anchoring means being stuck in the heart. Ex. 1013, 4:16–22. Moreover, the nature of the problem to be solved is typically pertinent to the motivation for combining the teachings of simpler mechanical technologies. Tokai, 632 F.3d at 1371 (“We have consistently stated that courts may find a motivation to combine prior art references in the nature of the problem to be solved, and that [t]his form of motivation to combine evidence is particularly relevant with simpler mechanical technologies.” (alternation in original) (citations and internal quotations omitted)). The technologies in this proceeding involve medical devices implanted in the body for neurostimulation, not simple mechanical technologies. See, e.g., Ex. 1001, 1:36–41 (describing the field of the invention for ’314 patent as “an implantable medical electrical lead having at least one stimulation electrode adapted to be implanted near the sacral nerves for stimulation of a bundle of sacral nerve fibers and a fixation mechanism for providing chronic stability of the stimulation electrode and lead”). Accordingly, Petitioner’s reasoning premised on Young, Gerber, and Lindegren solving the same problem as the ’314 patent does not persuade us that a POSITA would have had a reason to combine the teachings of the references.” slip op. at 31

  Patent outcomesUS 8,626,314 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,626,314
• T-Max (Hangzhou) Technology Co., Ltd. / T-Max Industrial (H.K.) Co. Ltd. v. Lund Motion Products, Inc.No claims unpatentable
  PTAB · Mar 12, 2020 · IPR2018-01636 · APJ Alyssa A Finamore · IPR · Final written decision

  Claims 1–13 were not shown unpatentable because Petitioner did not adequately explain why a skilled artisan would combine Matthews and Dean to produce the claimed straddling segment.

  RulingsFinal written decision

  • Skill levelOther

    “possessed at least a Bachelor’s degree in mechanical engineering and at least one year of mechanical design experience in the area of mechanisms and linkages.” Pet. 18 (citing Ex. 1002 ¶ 29). Patent Owner similarly argues a person of ordinary skill in the art “would have had a bachelor’s degree in mechanical engineering or other similar type of engineering degree, combined with at least one year of experience in the field of mechanical design or relevant product design experience.” PO Resp. 13 (citing Ex. 2001 ¶¶ 25–27). Patent Owner further argues the difference between Petitioner’s proposed level of ordinary skill and that of Patent Owner “is immaterial to deciding the issues raised by the Petition.” Id. Upon consideration of the record, including Matthews, Dean, and Norton, we agree with Patent Owner that the difference between Petitioner’s and Patent Owner’s respective explanations of the level of ordinary skill in the art is inconsequential to considering Petitioner’s asserted grounds of unpatentability. Our assessment of the merits of this proceeding would be the same under both of the proffered explanations, and, therefore, it is unnecessary to adopt one explanation of the level of ordinary skill in the art over the other.” slip op. at 17

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

    “Petitioner points to both intrinsic and extrinsic evidence in support of its proposed constructions of the noted terms. Pet. 18–23. In that respect, 5 Exhibit 1010 is an excerpt from Merriam-Webster’s Collegiate Dictionary (10th ed. 1993). The exhibit itself does not include page numbering separate from the original page numbering of the dictionary, and the citation to this exhibit refers to the page of the dictionary. Petitioner relies on specific content of the Specification of the ’751 patent as well as the testimony of Dr. Delson. Id. We conclude that Petitioner’s proposed constructions have ample support in the record, and note that Patent Owner does not justify the basis for its disagreement of those constructions. We, therefore, adopt Petitioner’s constructions for the terms “flange” and “retain and straddle.”” slip op. at 19

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

    “These similarities, however, do not explain why a person would have combined the teachings of Matthews and Dean as Petitioner proposes. Petitioner confirms in its Reply that it is proposing to modify Matthews’s disclosure so that each of cranked members 7 is attached to the outside of each pair of links 8, 9. Reply 16–17, 19; see also Tr. 12:1–3 (“[T]he linkage that extends as element 7 could be on the outside of the other linkages 8 and 9 which is really the crux of the straddling segment. Instead of being on the inside, it’s on the outside.”). In order for the step resulting from Petitioner’s proposed combination of Matthews and Dean to retain and straddle at least one of links 8, 9, in accordance with Petitioner’s construction of “retain and straddle” as “connect on both sides to” (Pet. 21), Petitioner proposes to modify Matthews’s cranked members 7 to attach to the outside of pair of links 8 and pair of links 9 so that cranked members 7, collectively as a pair, attach to both sides of pair links 8 and pair of links 9. Petitioner is correct that Matthews and Dean teach retractable steps having similar four-bar linkages. In particular, Matthews’s cranked member 7 and Dean’s arm 100 appear to be corresponding components in the linkages that differ in how they attach to the other components of the linkage. Matthews’s cranked member 7 is attached to only one side of each link 8, 9, whereas Dean’s arm 100 straddles each link 116, 120. Ex. 1006, Figs. 1, 3; Ex. 1007, Fig. 4. Yet, Petitioner is not proposing to simply substitute Matthews’s cranked member 7 with Dean’s arm 100, or to modify Matthews’s disclosed step so that each cranked member 7 straddles each link 8, 9. Instead, Petitioner proposes to combine the teachings of Matthews and Dean so that Matthews’s cranked members 7, as a pair, straddle the two pairs of links 8, 9. Neither Petitioner nor Dr. Delson explains adequately why the similarities between Matthews’s step and Dean’s step convey that a person of ordinary skill in the art would have combined the teachings of Matthews and Dean as Petitioner proposes. Mere similarity of prior art structures is not a substitute for “articulated reasoning with some rational underpinning” that is necessary “to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).” slip op. at 25

  • Obviousness (§103) › Objective indicia / secondary considerationsNot reached

    “§ 103(a), and asserts the subject matter of these claims would have been obvious over the combined teachings of Matthews and Dean. Pet. 26–63; Reply 7–12, 15–25. Patent Owner disagrees with Petitioner’s contentions, and argues secondary considerations of nonobviousness confirm the claimed subject matter would not have been obvious. PO Resp. 19–50, 56–67; Sur-Reply 5–14, 17–24.” slip op. at 20

  Patent outcomesUS 9,561,751 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 9,561,751

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.