• Medtronic Corevalve LLC / Medtronic, Inc. v. Speyside Medical, LLCNo claims unpatentable
  PTAB · Aug 12, 2022 · IPR2021-00239 · APJ Patrick R Scanlon · IPR · Final written decision

  The Board held that claims 1, 2, 5, 7–11, 13, 14, and 18–23 were not shown unpatentable because the combinations did not establish the claimed carrier-length limitation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner submits that a person having ordinary skill in the art “would have had a minimum of either a medical degree and experience working as an interventional cardiologist or a Bachelor’s degree in bioengineering or mechanical engineering (or a related field) and approximately two years of professional experience in the field of prosthetic cardiovascular implants,” and “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Pet. 21–22 (citing Ex. 1002 ¶¶ 31–34). We adopted Petitioner’s proposed level of ordinary skill in the art in the Decision on Institution, stating it was “consistent with the evidence of record, including the asserted prior art.” Dec. Inst. 9–10. In its Response, Patent Owner notes that it and its expert, Dr. Vesely, apply Petitioner’s level of ordinary skill in the art for the purposes of this proceeding. PO Resp. 20. Based on our review of the record before us, we continue to apply the level of ordinary skill in the art adopted in the Decision on Institution.” slip op. at 10

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

    “Beyond addressing this new argument, we determine that we need not expressly construe any other claim term to resolve the parties’ disputes because doing so would have no effect on the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); see also Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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)).” slip op. at 13

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

    “Instead, we agree with Patent Owner that Leonhardt’s cylindrical end portions change in shape and length, at least to some degree, when stent 26 is expanded or collapsed. See PO Resp. 26–28. We also credit Dr. Vesely’s uncontroverted and well-reasoned testimony on this point. See Ex. 2004 ¶¶ 83–85. Furthermore, we agree that the Petition and Dr. Drasler rely 8 Patent Owner actually cites to Exhibit 2013, but this is an apparent typographical error because the quoted language appears in lines 20–22 on page 195 of Exhibit 2027. We note that the quoted testimony reiterates Dr. Drasler’s other testimony that “[t]he length of the Leonhardt device would be the length of the connecting bar plus the length of the stent components at each end of the connecting bar.” Ex. 2027, 195:11–14. solely on connecting bar 29 holding the cylindrical end portions a predetermined distance apart to support the assertion that the stent’s length is substantially equal in each configuration. See Pet. 46–47; Ex. 1002 ¶¶ 134– 137. As such, Petitioner has failed to explain the effect that the changes in Leonhardt’s cylindrical end portions have on the overall length of stent 26. Accordingly, we are not persuaded that Petitioner has met its burden of showing, by a preponderance of the evidence, that Leonhardt discloses “a length of the carrier element in the moveable configuration being substantially equal to or less than a length of the carrier element in the first expanded configuration.”” slip op. at 22

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

    “In view of the above, we are not persuaded on the complete record before us that Petitioner has met its burden of showing, by a preponderance of the evidence, that independent claim 1 is unpatentable over the combination of Leonhardt and Gabbay. Because we are not persuaded Petitioner has demonstrated sufficiently that the combination of Leonhardt and Gabbay renders claim 1 obvious, we need not reach Patent Owner’s assertions regarding objective indicia of nonobviousness.” slip op. at 24

  Patent outcomesUS 8,377,118 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,377,118
• Apple Inc. v. Masimo CorporationNo claims unpatentable
  PTAB · Apr 12, 2022 · IPR2020-01524 · APJ Robert L Kinder · IPR · Final written decision

  The Board held claims 1–16 not unpatentable because Petitioner failed to prove obviousness over the asserted Richardson-based grounds, including the required distinct, nonzero duty cycles.

  RulingsFinal written decision

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

    “Based on the final record, we find Patent Owner’s proposed interpretation of “duty cycle” persuasive. The evidence cited supports “duty cycle” to mean “the ratio of operating time (or on time) of a light source to the total time period during which the light source is intermittently operated, expressed as a percentage.” See Ex. 2002 ¶ 36 (relying on an electronics dictionary and testifying as to how the ’776 patent uses “duty cycle” consistent with its plain and ordinary meaning to require a ratio of operating time to total elapsed time). We are persuaded by the Specification of the ’776 patent describing the “duty cycle” as the ratio of the operating time (or on time) of the red and infrared LEDs to the total time period during which the LEDs are intermittently operated, expressed as a percentage. See Ex. 1001, 2:43–44; Ex. 2004, 225; Ex. 2002 ¶¶ 37, 39. The duty cycle is described as consistently being “in the range of about 3.125% to about 25%.” Ex. 1001, 2:43–44, Figs. 5, 8. The weight of the evidence, including the claim language and Specification, convinces us that neither the first nor the second duty cycles can be 0%. The claims require the first and second control protocol light sources to generate light so that the patient monitor can calculate a pulse rate based on the light. See Ex. 1001, 11:45–12:21 (“when operating according to the first control protocol, calculating . . . measurement values of the pulse rate, . . . responsive to light from the first control protocol light source” and “calculating the measurement values of the pulse rate, . . . responsive to light from the second control protocol light source”); Ex. 2002 ¶¶ 41, 42. The first and second duty cycles cannot be 0% because the light sources of the first and second control protocol light source would not generate light to enable pulse rate calculation as required by the claims. See Ex. 2002 ¶ 42 (“[I]f the first control protocol light source had a duty cycle of 0%, the light source would be inactive and would not generate light. If the light source did not generate light the monitor could not calculate the ‘measurement” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Level of Ordinary Skill in the Art Petitioner identifies the appropriate level of skill in the art as that possessed by a person having “a Bachelor of Science degree in an academic discipline emphasizing the design of electrical, computer, or software technologies, in combination with training or at least one to two years of related work experience with capture and processing of data or information, including but not limited to physiological monitoring technologies.” Pet. 6 (citing Ex. 1003 ¶ 32 (“someone with a working knowledge of physiological monitoring technologies”)). “Alternatively, the person could have also had a 1 Neither party has introduced objective evidence of non-obviousness. See Tr. 23:25–24:3. Master of Science degree in a relevant academic discipline with less than a year of related work experience in the same discipline.” Id. Patent Owner makes several observations regarding Petitioner’s identified level of skill in the art but, “for this proceeding, [Patent Owner] applies the asserted level of skill identified in the Petition.” PO Resp. 11– 12. We adopt Petitioner’s assessment as set forth above, which appears consistent with the level of skill reflected in the Specification and prior art.” slip op. at 22

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “generated by the source is adjusted to optimize the signal to noise ratio and to minimize power consumption.” Ex. 1006, 11:54–57; Pet. 46, 49, 50. Turcott conveys that this “can be done by adjusting the drive current, the frequency of the pulse train, the pulse duration, or the duty cycle of the pulse train.” Ex. 1006, 11:57–59. Dr. Anthony contends that Turcott describes shifting the frequency of the pulse train and adjusting the duty cycle from one duty cycle to another, and infers that these things could be done during normal operation of the device to reduce power consumption. See, e.g., Ex. 1003 ¶¶ 81, 82, 87. We do not agree that Turcott teaches shifting the frequency of the pulse train or adjusting the duty cycle during normal operation of the device as alleged by Petitioner. We have considered Dr. Anthony’s testimony as to these points, but we determine that the scope of Turcott’s teachings are better explained by Dr. Madisetti. We find more persuasive Dr. Madisetti’s testimony and reasoning that a person of ordinary skill in the art would have understood that Turcott’s adjustments would happen during device design or setup, and not during operation of the device. Ex. 2002 ¶¶ 101–105. This is so because Turcott discloses operating at a single, low duty cycle that minimizes power consumption. See Ex. 2002 ¶ 104; Ex. 1006, 11:51–52 (“To conserve energy, the source is preferably driven with a low duty cycle pulse train.”). We also find persuasive Dr. Madisetti’s cross-examination testimony that the use of the terminology “optical power generated by the source is adjusted” in Turcott, “refers and describes to a POSA that it’s adjusted, past tense, at design time or manufacturing or setup,” and that “Turcott refers to this adjusted in past tense through the term ‘adjusting’ referring to that time at manufacturing or setup.” Ex. 1038, 22:16–24:15.” slip op. at 43

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

    “As we determined above, the claimed first and second duty cycles cannot be 0%. This determination precludes Petitioner’s first mapping of Richardson from reading on claims 1 and 11. Petitioner identifies the first mapping of Richardson as the transition of Richardson’s oximeter from State 2 to State 1. Pet. 10 (“For this first mapping of Richardson . . . the claim elements . . . are mapped to disclosure in Richardson describing the oximeter transitioning from State 2 (as the first control protocol) to State 1 (as the second control protocol).”). Petitioner argues that State 2 (blue below) is the “first control protocol” and State 1 (orange below) is the “second control protocol” required by claims 1 and 11. Patent Owner’s annotated Figure 2 of Richardson (Ex. 1004) describes implementing the noise reduction methods in a pulse oximeter having three states, including State 1 (highlighted in orange) and State 2 (highlighted in blue). PO Resp. 33. Richardson’s pulse oximeter transitions from State 1 to State 2 “[e]very 30 seconds,” and “[t]he purpose of State 2 is to detect new noise sources that may have appeared since the last State 0 measurements.” Ex. 1004, 9:39–42. In State 2, the oximeter reassesses the noise “by turning off one LED; typically the red LED,” for about 1.4 seconds. Id. at 6:2–3, 9:52–53. When the 1.4 seconds (i.e., idle time) expires, the oximeter automatically returns to State 1 where it uses the newly estimated noise values. Id. at 9:63–65; see also id. at 9:66–10:5 (discussing idle time). When operating in State 1, the oximeter has both LEDs turned on. Id. at 5:55–67. Petitioner argues that the red LED “has a duty cycle of 0%” in State 2 and a duty cycle of “at least 25%” in State 1. Pet. 16. Petitioner admits that in State 2 “the red light source is turned off.” Id. As we determined in the claim construction analysis, a person of ordinary skill in the art would have understood that the “first duty cycle” cannot be 0% based on the claims and Specification. Thus, under the proper construction of “first duty cycle,” turning off the red LED in State 2 (Petitioner’s “first control protocol”) is not operating according to a “first duty cycle” as required by claims 1 and 11. Ex. 2002 ¶ 66.” slip op. at 28

  Patent outcomesUS 10,433,776 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,433,776
• Apple Inc. v. Masimo CorporationNo claims unpatentable
  PTAB · Apr 11, 2022 · IPR2020-01523 · APJ Josiah C Cocks · IPR · Final written decision

  Apple did not prove claims 1–7, 9–18, and 20–24 unpatentable; the asserted obviousness grounds failed to establish the claimed power reduction or the required light detector-derived processing characteristics.

  RulingsFinal written decision

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

    “In our view, Patent Owner has the better explanation for what a person of ordinary skill in the art would understand from the ’703 patent as to what constitutes the “processing characteristics” that factor into the patient monitoring described by the claims. In that respect, we agree with Patent Owner’s above-noted assessments of the requirements of claims 4 and 8. Patent Owner persuasively explains that claim 4 does not emerge as meaningless based on Patent Owner’s construction of “processing characteristics” but instead claim 4 further refines the understanding of the type of processing characteristics that are received from the light detectors, i.e., signal characteristics rather than physiological measurements. We also share Patent Owner’s view that the understanding of claim 8 taken in the context of the Specification (e.g., Fig. 4), establishes that the estimate of power consumption is determined based on signals from light detector 490. We agree that Petitioner’s views as to how claims 4 and 8 inform the meaning of “processing characteristics” lack support and fall short. We conclude that it is inconsistent with the ’703 patent to tease out the sweeping premise advanced by Petitioner that simply any information that is processed, regardless of its source, can constitute the “processing characteristics” that are employed as a part of all of the challenged claims to monitor a patient based on light signals. Rather, we rely on the written description of the ’703 patent as a useful guide in informing the meaning of “processing characteristics,” and conclude that the proper understanding of the term is that such characteristics are derived from signals from light detectors. See Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (“It is therefore entirely appropriate for a court, when conducting claim construction, to rely heavily on the written description for guidance as to the meaning of the claims.”). Accordingly, we conclude that, in the context of the ’703 patent, “processing characteristics” are determined from a signal received from one or more detectors configured to detect light.” slip op. at 13

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

    “2. Other Claim Terms Upon consideration of the entirety of the arguments and evidence presented, we conclude no further explicit construction of any claim term is needed to resolve the issues presented by the arguments and evidence of record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “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))).” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not offer its own assessment of the level of ordinary skill. Patent Owner, however, does level a measure of criticism of Petitioner’s assessment of the level of skill in the art as being inconsistent with Petitioner’s own declarant, Dr. Anthony, in not accounting for experience in “non-invasive optical biosensors.” PO Resp. 16–17. Nevertheless, Patent Owner expresses that it “applies the asserted level of skill identified in the Petition.” Id. at 17 (citing Ex. 2001 ¶ 22). We determine that the Petitioner’s expressed level of ordinary skill in the art is consistent with the ’703 patent and the prior art of record. Accordingly, we adopt it in this Decision.” slip op. at 16

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “We are not persuaded by Petitioner’s view that suspending Diab’s motion artifact suppression module necessarily will result in reduced power consumption. Although Amano does describe that its particular system enjoys reduced power consumption when its body movement component eliminating section 30 is suspended (Ex. 1004, 21:65–22:6), Patent Owner presents plausible reasoning and evidence that such power reduction may not occur in Diab’s differently structured and configured system. As between the conflicting testimony of Dr. Anthony and Dr. Madisetti on this matter, we find more credible the testimony of Dr. Madisetti in explaining why the same power consumption reduction attributed in Amano may not occur in Diab’s differently structured system. See, e.g., Ex. 2001 ¶¶ 76–77, 87–90. Yet, the premise of supposed power reduction is the foundational reason that Petitioner advances in combining the teachings of Amano with Diab. We conclude that Petitioner has not met its burden of persuasion on this issue. See Dynamic Drinkware, 800 F.3d at 1378.” slip op. at 31

  Patent outcomesUS 8,457,703 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,457,703
• Shenzhen Buxiang Network Technology Co., Ltd. v. Sun Pleasure Co. LimitedNo claims unpatentable
  PTAB · Apr 11, 2022 · IPR2021-00080 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–9 were not shown unpatentable because Metzger lacked the claimed fluid passage, and Wu was not prior art based on the claims’ earlier reduction to practice.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on the testimony of Mr. Kuchel, Petitioner submits that a person of ordinary skill in the art “would have either (i) a bachelor’s degree in mechanical engineering, or an equivalent field, or (ii) would have an associate degree in mechanical engineering, or an equivalent field, and two years of practical experience in inflatable product design.” Pet. 16 (citing Ex. 1002 ¶ 26). In the Decision on Institution, we adopted Petitioner’s proposed level of ordinary skill in the art, stating it was “consistent with the evidence of record, including the asserted prior art.” Dec. Inst. 9. In its Response, Patent Owner makes arguments that rely on Petitioner’s proposed level of ordinary skill in the art, but does not dispute Petitioner’s definition. See PO Resp. 35, 39–53 (citing Ex. 2014 ¶ 66). Based on our review of the complete record, we continue to apply the level of ordinary skill in the art adopted in the Decision on Institution.” slip op. at 10

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

    “Petitioner proposes claim constructions for the terms “substantially below” and “substantially inwardly” recited in claims 1 and 6. Pet. 40–41. In the Decision on Institution, we determined that it was not necessary to construe the terms at that stage of the proceeding. Dec. Inst. 9–10 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)). Patent Owner contends “the claim terms ‘substantially below’ and ‘substantially inwardly’ are sufficiently clear on their face to preclude any need for claim construction,” but proposes claim constructions that differ somewhat from Petitioner’s proposed constructions in the event the Board determines that these terms require claim construction. PO Resp. 13, 15–16. Patent Owner also proposes a claim construction for the term “upper tubular periphery” recited in claims 1 and 6 that Petitioner opposes. Id. at 17–19; Pet. Reply 7–10. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec, 868 F.3d at 1017. Because the outcome of our decision does not depend on either parties’ construction of the terms “substantially below,” “substantially inwardly,” or “upper tubular periphery,” we need not construe these terms to resolve the issues in dispute in this proceeding.” slip op. at 11

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

    “We agree with Patent Owner that Metzger’s gaps define fluid passages located between adjacent side support beams 25 (i.e., “internal walls”) and are not formed in any of the side support beams. We are not directed to any written description in Metzger indicating that the gaps are formed in a side support beam.7 Instead, Figures 5 and 6 of Metzger depict the gaps as being defined between four distinct side support beams 25. Furthermore, as Patent Owner points out, Mr. Kuchel appears to agree that there are no passages formed through the side support beams 25 of Figures 5 and 6. Ex. 2003, 107:12–108:9, 108:17–108:21. For these reasons, we determine that Metzger’s gaps are not formed through an internal wall, as required by claim 1. In the Reply, Petitioner asserts that, even if Metzger discloses four discrete, spaced-apart beams or walls, “the gaps or slices between walls are apertures in a structure through which air can pass.” Pet. Reply 15 (emphasis added). This argument is not persuasive because claim 1 recites that the fluid passage is formed through the internal wall (which Petitioner asserts is met by Metzger’s side support beam 25), not just any structure. Petitioner’s general assertion that air passes through “a structure” fails to establish that the gaps are formed in a side support beam.” slip op. at 16

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

    “Specifically, Petitioner argues that one of ordinary skill in the art would have understood from Metzger “that an air passage would be necessary to bypass the side support beam 25 and inflate the upper tubular periphery for the air mattress to function as intended.” Id. (citing Ex. 1002 ¶ 200). According to Petitioner, because Metzger discloses only a single air inlet valve, an ordinarily skilled artisan would have understood that providing openings, or fluid passages, through the side support beam 25, in lieu of or in addition to the gaps between the side support beam 25, would have been a simple solution to adequately inflate the peripheral frame of the mattress defined by the side support beam(s) 25. Id. at 74–75 (citing Ex. 1002 ¶ 200). Petitioner thus presents two alternate theories for modifying Metzger: (1) providing fluid passages in at least one side support beam 25 in addition to the gaps, and (2) providing fluid passages in lieu of the gaps. In support of the first theory, Petitioner only argues that providing fluid passages in the side support beams, in addition to the gaps between the ends of the side support beams, would have allowed the peripheral frame to inflate more freely. Id. at 75 (citing Ex. 1002 ¶ 201). In its Response, Patent Owner contends that “Petitioner is just wrong.” PO Resp. 45 (citing Ex. 2001 ¶¶ 146–149). Dr. Letton testifies that pumps used to inflate air mattresses are low flow and low pressure and generally inflate an air mattress to a maximum pressure of around 1 psi. Ex. 2001 ¶ 147. Dr. Letton further testifies that, with Metzger’s design, the” slip op. at 28

  Patent outcomesUS 7,353,555 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,353,555
• SHDS, Inc. / Galderma Laboratories, L.P. v. Truinject Corp.No claims unpatentable
  PTAB · Nov 15, 2021 · IPR2020-00937 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 1, 3, 4, 6–16, and 20–26 were not shown unpatentable because the petition did not account for required simulated therapeutic-agent delivery and real-time digital-plunger limitations.

  RulingsFinal written decision

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

    “In light of the parties’ mutually acknowledged agreement of the meaning of the noted-term, and given that we do not see reason on the record before us to deviate from that meaning, we apply the same meaning of “a simulated flow of therapeutic agent delivered from the digital model of the syringe to the digital model of the training apparatus” to the noted claim phrase and consider no further construction to be necessary. 3. Remaining Claim Terms We discern that no other term needs an express construction to resolve the parties’ dispute. See Nidec, 868 F.3d at 1017.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “Thus, Patent Owner proposes a construction of the above-noted phrase as “a simulated flow of therapeutic agent delivered from the digital model of the syringe to the digital model of the training apparatus.” Petitioner acknowledges that “the parties agreed to the construction of this term in the Delaware Action. No further construction of the term is required.” Pet. Reply 5. In light of the parties’ mutually acknowledged agreement of the meaning of the noted-term, and given that we do not see reason on the record before us to deviate from that meaning, we apply the same meaning of “a simulated flow of therapeutic agent delivered from the digital model of the syringe to the digital model of the training apparatus” to the noted claim phrase and consider no further construction to be necessary.” slip op. at 9

  • Strike new argumentNew argument disregardedDecided for patent owner

    “on Lampotang’s paragraph 89, Petitioner attempts to expand its proposed ground, and uses the Petitioner Reply to do so. To that end, Petitioner turns to specific disclosure of Samosky at paragraph 67 as providing an evidentiary basis to conclude that depiction of a simulated delivery of a therapeutic agent “would have been obvious.” Pet. Reply 14. A reply provides an opportunity for a party to respond to arguments made, for instance, in a patent owner response. 37 C.F.R. § 42.23(b). A reply, however, is not an appropriate vehicle to reconfigure a proposed ground based on new or additional evidence that is not reasonably tied to a ground advanced in the Petition, which is what Petitioner seeks to do here. The Petition does not set forth an adequate basis to conclude that Petitioner relied on Samosky’s teachings to account for features of claim 1 of the ’232 patent. As Patent Owner points out (PO Sur-reply 13–14), it is impermissible and untimely for Petitioner to now attempt to do so as a part of the Reply. See, e.g., Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1330–31 (Fed. Cir. 2019) (“[A]n [inter partes review] petitioner may not raise in reply ‘an entirely new rationale’ for why a claim would have been obvious.”) (citing Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1370 (Fed. Cir. 2016)).” slip op. at 21

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Lampotang’s disclosure with reference to Figure 2 focuses on the CVL technique, which involves withdrawing blood from a blood vessel rather than injecting medication into the patient’s body. Ex. 1008 ¶¶ 89-90. The CVL technique is not concerned with visualizing a simulated flow of therapeutic agent delivered from a digital model of the syringe to the digital model of the training apparatus. Ex. 2005 ¶ 102; see PO Resp. 41. We credit Dr. Pugh’s testimony on this matter, as we find it consistent with Lampotang’s disclosure as to the content of its Figure 2 and Lampotang’s description of the CVL technique. See, e.g., Ex. 1008 ¶¶ 78, 89–90.” slip op. at 20

  Patent outcomesUS 10,290,232 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 10,290,232
• 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
• T-Max (Hangzhou) Technology Co., Ltd. / T-Max Industrial (H.K.) Co. Ltd. v. Lund Motion Products, Inc.No claims unpatentable
  PTAB · Mar 10, 2020 · IPR2018-01638 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 1–15 were not shown unpatentable: Falardi does not meet claim 1’s initial downward movement limitation, and DePaula does not cure that deficiency for claim 3.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “Petitioner, however, does not point to any evidentiary support for the above-reproduced argument other than the testimony of Dr. Delson at paragraph 80 of his Declaration (Ex. 1002). That testimony is identical to Petitioner’s argument and includes no citation to the record. In its Reply, Petitioner submits that Dr. Delson’s testimony is offered on the premise that the meaning of “initial” is not “not limited to only being the ‘immediate’ or ‘instantaneous’ motion of the arms when the step retracts from the deployed position.” Pet. Reply 7. Thus, we understand Petitioner to advocate that Dr. Delson’s testimony is offered with an understanding of the meaning of “initially” that is not limited to the first or beginning motion of the arms. As noted above, however, we reject that construction of “initially.”” slip op. at 18

  • Skill levelSkill level board ownOther

    “We do not discern any meaningful difference in the parties’ respective evaluations of the level of ordinary skill in the art. We also concur with Patent Owner’s assessment that to the extent there are any differences in those evaluations, such differences do not affect the issues raised in the Petition. In that respect, we conclude that the assessment of the merits of this proceeding are the same under both of the parties’ evaluations of the level of ordinary skill in the art. To that end, we conclude that it is unnecessary to formally adopt one evaluation over the other in deciding the 8 Exhibit 2008 is a Declaration of John Pratt, Ph.D. issues at hand. We further note that the cited prior art references further reflect the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Furthermore, we also are not persuaded that Patent Owner’s declarant, Dr. Pratt, “did not provide any explanation or analyses to support his testimony,” as is argued by Petitioner. See Pet. Reply 4. Indeed, his testimony that “[a]s used in the specification, the ‘initial motion’ is only the first, or beginning movement toward a position such as the retracted or deployed positions” of step member 922 finds direct support from the abovediscussed portions of the Specification of the ’277 patent. In light of the record before us, including the disclosure of the ’277 patent, the meaning of “initial” or “initially” as understood from multiple dictionaries (Exs. 2002–2007)10, and the credible testimony of Dr. Pratt, we” slip op. at 13

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

    “persuaded that, in the context of the ’277 patent, Petitioner provides adequate evidence or explanation that its construction of “initially” as meaning “of or relating to the beginning; incipient” is the correct one. It is apparent from the entirety of the record, including Petitioner’s proposed grounds of unpatentability, that its construction is offered in an attempt to sweep into the meaning of “initial[] move[ment]” of the arms a movement that is not the first or beginning one. Petitioner seemingly bases that construction on the premise that a sole dictionary definition of “initial” as generally meaning “relating to the beginning” provides sufficient basis for its position. Petitioner, however, does not provide sufficient reasoning why the movement “relating to the beginning” should be read so broadly as to encompass movement of a component that is not the first occurring movement. Patent Owner’s construction, on the other hand, draws ample and logical support from the record as a whole, including both intrinsic and extrinsic evidence. Even assuming that the use of “initial” in the Specification is directed to movement that is not necessarily the downward motion of components, there is nothing therein that conveys that the meaning of “initial” should be expanded to include movement that is not at the beginning of a component’s act of motion. For instance, the portion of the disclosure at column 31, lines 46–53, of the ’277 patent pertains to Figure 22 and describes upward motion of step member 922 and stepping deck 924. That portion explains that “initial” movement of step member 922 is upward “after which the step member 922 and upper stepping surface 924c travel generally downward” to a deployed position. Ex. 1001, 31:46– 53. Thus, that portion of the disclosure describes exemplary “initial” upward movement of step member 922 followed by downward movement. There is nothing in that disclosure that conveys that the “initial” upward movement of step member 922 includes movement that is not viewed as being in an upward direction at the very beginning point that step member 922 starts to move. We also do not discern that the prosecution history of the application that became the ’277 patent (Ex. 1013) suggests any meaning of “initial” movement of a component that is not the first movement of the component.” slip op. at 12

  Patent outcomesUS 8,157,277 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,157,277
• Haag-Streit AG v. Eidolon Optical, LLCNo claims unpatentable
  PTAB · Dec 19, 2019 · IPR2018-01311 · APJ Eric C Jeschke · IPR · Final written decision

  Claims 1, 5, 6, 8–10, 14–16, and 19 were not shown unpatentable because the cited references did not disclose an LED itself generating blue light energy.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Decision on Institution, we adopted Petitioner’s proposed level of ordinary skill in the art, stating that it “appear[ed] consistent with the record at th[at] stage of the proceeding.” Dec. Inst. 6. Patent Owner does not address or dispute Petitioner’s proposed definition of the level of ordinary skill in the art. See generally PO Resp.; Sur-reply. Petitioner did not further address this issue in the Reply. See generally Pet. Reply. We continue to apply Petitioner’s proposed level of ordinary skill in the art in the analysis below.” slip op. at 7

  • ExcludeOther

    “As discussed above (see supra § II.C.3.a), to resolve the dispute between the parties here, we need not make a determination one way or the other regarding Patent Owner’s assertion as to the specific amount of power necessary to cause sodium fluorescein to fluoresce. Instead, the outcome here follows from the determination that Petitioner (who has the overall burden of persuasion as to unpatentability) has not persuasively established the existence, as of February 5, 1992, of a blue LED having sufficient power output to cause sodium fluorescein to fluoresce. Accordingly, we dismiss Petitioner’s motion as to Exhibit 2014 as moot because we need not rely on that exhibit (or the specific statement highlighted by Petitioner) in this Decision. See TPG 79–80.” slip op. at 43

  • Strike new argumentNew argument disregardedDecided for patent owner

    “commercially available by CREE, Inc. in 1992” and asserts that “Patent Owner’s arguments are wrong in that blue LEDs having sufficient output power to cause sodium fluorescein to fluoresce existed in 1992 at the time of Longobardi.” Pet. Reply 28, 32. When asked, during the oral hearing, for evidentiary support for these statements, Petitioner attempted to rely on Exhibit 2024. See Tr. 13:14–14:18 (counsel for Petitioner generally discussing Exhibit 2024 as potential support). That exhibit, however, was not discussed or relied on in either of Petitioner’s briefs. Id. at 38:22–39:20 (counsel for Petitioner discussing Exhibit 2024, but also acknowledging that it was not cited in either brief). We will not further consider Petitioner’s untimely argument as to Exhibit 2024. See Dell Inc. v. Acceleron, LLC, 884 F.3d 1364, 1369 (Fed. Cir. 2018) (noting that the “Board was obligated to dismiss [the petitioner’s] untimely argument . . . raised for the first time during oral argument”); Patent Trial and Appeal Board Consolidated Trial Practice Guide (“TPG”) 85–86 (Nov. 2019) (discussing how, at the oral hearing, a party “may only present arguments relied upon in the papers previously submitted”), available at https://www.uspto.gov/sites/default/ files/documents/tpgnov.pdf. Petitioner did not identify any other record support for the two assertions as to the alleged state of the art in 1992.” slip op. at 30

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “one of ordinary skill in the art would have understood Longobardi as implicitly disclosing the presence of a blue LED is that, as argued by Patent Owner, none of the declaration testimony of Dr. Jiao supports that position. See PO Sur-reply 5 (“Petitioner lacks evidence that Longobardi implicitly or inherently teaches an LED sufficient to generate blue light energy itself as required by claim 1. Petitioner’s expert does not testify as to this fact.” (emphasis added)), 7 (“Petitioner fails to provide any expert testimony . . . that Longobardi teaches a blue light energy created by the LED.”). Indeed, in the entire section of the Reply Brief discussing why Longobardi allegedly implicitly discloses a blue LED, Petitioner never cites to Dr. Jiao’s testimony as evidence of how one of ordinary skill in the art would have understood the highlighted passages. See Pet. Reply 18–22; see also PO Sur-reply 14 (“Petitioner’s attorney arguments that Longobardi implicitly discloses the limitation of at least one LED sufficient to generate blue light energy itself as required by claim 1 are unreasonable.”). “Attorney argument is not evidence.” Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017); see also Elbit Sys. of Am., LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1359 (Fed. Cir. 2018) (citing this aspect of Icon Health in the context of an appeal from an inter partes review). In addition, the testimony in Dr. Jiao’s Reply Declaration that is cited in Petitioner’s Reply (in the part discussing the state of the art of blue LEDs “[i]n 1992” (Pet. Reply 26)) does not actually support Petitioner on the ultimate factual issue here. See Pet. Reply 26–32 (citing Jiao Reply. Decl. ¶¶ 11–21). Instead, most of Dr. Jiao’s testimony in these paragraphs summarizes and addresses Dr. Lebby’s position on the 1-milliwatt issue (discussing Exhibits 1021 and 1022). See Jiao Reply Decl. ¶¶ 11–20. After that discussion, Dr. Jiao concludes with a paragraph taking the position that one of ordinary skill in the art “at the time of the invention would have found that Longobardi teaches and suggests the use of a blue LED having sufficient power to cause sodium fluorescein to fluoresce.” Id. ¶ 21. None of Dr. Jiao’s testimony, however, actually addresses the state of the art of blue LEDs in 1992, which, as acknowledged by Petitioner, is the relevant point in time to assess the alleged implicit disclosures in Longobardi.” slip op. at 27

  Patent outcomesUS 6,547,394 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 6,547,394
• Apple Inc. v. Universal Secure Registry, LLCNo claims unpatentable
  PTAB · Nov 5, 2019 · IPR2018-00812 · APJ Jason W Melvin · IPR · Final written decision

  The Board found claims 1–3, 16, 21–24, 37, and 38 not shown unpatentable over Reber and Franklin because the combination did not establish the claimed access restrictions and information handling.

  RulingsFinal written decision

  • Skill levelOther

    “invention for the ’539 patent “would have a Bachelor’s Degree in electrical engineering, computer science, or a related scientific field, and approximately two years of work experience in the computer science field including, for example, operating systems, database management, encryption, security algorithms, and secure transaction systems, though additional education can substitute for less work experience and vice versa.” Pet. 10 (citing Ex. 1102 ¶¶ 61–62). Patent Owner submits that the level of skill would involve “a Bachelor of Science degree in electrical engineering and/or computer science, and three years of work or research experience in the fields of secure transactions and encryption, or a Master’s degree in electrical engineering and/or computer science and two years of work or research experience in related fields.” PO Resp. 17 (citing Ex. 2018 ¶¶ 16– 20). Patent Owner agrees that its “description of the level of ordinary skill in the art is essentially the same as that of the Petitioner, except that Petitioner’s description requires two years of work or research experience (as compared to three years).” Id. at 17–18. We do not understand any of the parties’ disputes to turn on a precise definition of the level of skill in the art and apply the level of skill as defined by the parties.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “To support our analysis of the disputed issues below, we construe “account identifying information” and “third party.” We conclude that there is no need to construe any other term to resolve the issues in this decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 7

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

    “We agree the claim language supports that the separately recited “third party” must be different from the claimed “provider” and “entity.” As to the secure registry itself, we agree further with Patent Owner that the claim language mandates that the “third party” cannot be the secure registry system. The claims recite that the secure-registry processor is configured such that “account identifying information is provided to a third party.” By using “provided,” the claim instructs that the secure registry must send account-identifying information somewhere, not simply perform an additional operation on the information.5 Patent Owner further focuses on the party at issue. According to Patent Owner, the “third party” should be “a party other than one of these other parties already recited in the claims.” PO Resp. 24. Although the claims recite the “secure registry” as a system, as opposed to the “provider” and “entity,” which it recites as “parties,” we agree with Patent Owner that for a third party to be distinct from the secure registry, it should be distinct from whomever operates the secure registry. See id. at 24–25, 47–48 n.8; infra at 21. Accordingly, we construe “third party” as “a party that is not the secure registry, the entity, or the provider.”” slip op. at 9

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

    “The Petition states that it would have been obvious to perform merchant validation at the processor and database, but gives no reason for making that change. See Pet. 37. Instead, the Petition states a skilled artisan “would have applied the known techniques of Franklin to improve the security of the Reber system” and that doing so would have reduced fraud by merchants. Id. (citing Ex. 1102 ¶ 114). As explained, “the known techniques of Franklin” were to perform merchant validation at the merchant’s bank, not at the secure registry. Ex. 1132, 11:43–46 (“The acquiring bank validates the authorization request by verifying that the merchant is a valid merchant and that the credit card number represents a valid number.”). Thus, a reason to use Franklin’s techniques does not further justify modifying Franklin’s teaching to perform validation at the secure registry as claimed. Petitioner attempts to justify the combination in the Reply, arguing that, in Franklin, “it would have been obvious simply to perform the merchant validation procedure at the issuing bank, depending on the needs of a particular implementation (for example, where the issuing bank and the acquiring bank are the same).” Pet. Reply 12–13. Petitioner reasons that “organizing the system in this way would . . . increase efficiency by reducing the overall number of computations (e.g., conducting only one validation/compliance operation and not two separate operations at two separate places).” Id. at 13. Those statements serve to highlight the deficiency of the Petition. Petitioner’s arguments in the Reply do not respond to Patent Owner, other than attempting to fill in a gap in the we conclude Petitioner’s showing regarding access restrictions at the secure registry is inadequate regardless of the construction of “access restrictions for the provider to secure data for the entity.” Petition. We agree with Patent Owner that Petitioner’s Reply arguments go too far beyond those of the Petition. See PO Sur-reply 15–16; 37 C.F.R. § 42.23(b) (2017); Trial Practice Guide Update 14–15 (Aug. 2018), https://go.usa.gov/xU7GP (“[A] reply . . . that raises a new issue or belatedly presents evidence may not be considered. . . . Examples of new issues are new theories or arguments necessary to make out petitioner’s case-in-chief . . . , such as a newly raised rationale to combine . . . that was not expressed in the petition.”); Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (holding that the Board did not err in excluding a reply as improper under 37 C.F.R. § 42.23(b) because Petitioner relied on a new rationale to combine). Petitioner failed to make an adequate showing in the Petition regarding a plain requirement of the claims. The Petition identifies no prior-art disclosure that taught or suggested to skilled artisans to implement access restrictions at the secure registry, and provides insufficient reasons why a skilled artisan would have had reason to do so. Thus, Petitioner fails to show that challenged claims 1, 22, or 37” slip op. at 13

  Patent outcomesUS 8,856,539 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,856,539
• Apple Inc. / Visa Inc. et al. v. Universal Secure Registry, LLCNo claims unpatentable
  PTAB · Oct 7, 2019 · IPR2018-00810 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1, 2, 7, 8, 10, 11, 14, 15, 21, 22, 24, 26, 27, 30, 31, and 34 were not shown unpatentable under § 103 over Maritzen, Jakobsson, and Niwa.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Factual indicators of the level of ordinary skill in the art include “the various prior art approaches employed, the types of problems encountered in the art, the rapidity with which innovations are made, the sophistication of the technology involved, and the educational background of those actively working in the field.” Jacobson Bros., Inc. v. United States, 512 F.2d 1065, 1071 (Ct. Cl. 1975); see also Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983) (quoting with approval Jacobson Bros.). The parties’ respective proposals are substantially similar such that there is no apparent dispute between the parties. Also, based on our review of the record before us, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Thus, for the purposes of this Decision, we adopt Petitioner’s definition. We note, however, that our findings in this proceeding would not differ under Patent Owner’s proposed definition.” slip op. at 8

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

    “We agree with Petitioner that the Specification identifies fingerprint, voice print, signature, iris or facial scan, DNA analysis, and possibly a picture of a person as examples of biometric information. Furthermore, we credit Dr. Shoup’s testimony that biometric information falls into the category of “things a person is.” See Ex. 1002 ¶ 33. Therefore, in the context of the claims and the Specification of the ’826 patent, we construe the term “biometric information” to mean “information about a user’s physical characteristics, such as fingerprint, voice print, signature, iris or facial scan, DNA analysis, or personal photograph.”” slip op. at 10

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

    “We agree Maritzen does not disclose expressly that PTD 100 is a handheld device. The only disclosure from Maritzen cited in the Petition, ¶ 63, describes the architecture for PTD 100 but makes no mention that PTD 100 is a handheld device. Ex. 1004 ¶ 63. The Petition does not direct us to any other disclosure in Maritzen that explicitly describes any of the disclosed PTD embodiments as being handheld, and we are not aware of any such disclosure. Furthermore, the testimony of Dr. Shoup cited by Petitioner merely repeats the same assertion that Maritzen’s PTD 100 is the first handheld device without providing any support or explanation for this assertion, other than citing the same ¶ 63 of Maritzen. Ex. 1002 ¶ 49.” slip op. at 13

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

    “We agree with Patent Owner. Maritzen discloses that clearing house 130 verifies that the biometric key (transmitted by PTD 100) is valid by comparing the biometric key to a known biometric key maintained within the clearing house. Ex. 1004 ¶ 48; see also id. at 81 (“Clearing house 130 also validates biometric key 350 against pre-established biometric key 950.”). Maritzen also discloses that “[p]rivacy card 110 only transmits the biometric key. The biometric information identifying the user is not transmitted at any time.” Id. ¶ 44. This disclosure indicates that the biometric key does not contain biometric information. In other words, the biometric key is something different than biometric information, which we have construed to mean “information about a user’s physical characteristics, such as fingerprint, voice print, signature, iris or facial scan, DNA analysis, or personal photograph.” See supra § III.C. Thus, we find that one of ordinary skill in the art would not consider replacing the known biometric key in clearing house 103 with second biometric information as taught by Jakobsson because comparing the biometric key to biometric information, rather than the known biometric key, would not be effective to verify the biometric key. In other words, because the biometric key does not contain biometric information, it could not be compared meaningfully to the second biometric information.” slip op. at 23

  Patent outcomesUS 9,100,826 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 9,100,826

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.