- Apple, Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCNo claims unpatentablePTAB · Dec 2, 2022 · IPR2021-00923 · APJ Brent M Dougal · IPR · Final written decision
Claims 1–14 were not shown unpatentable because Mann was not established as analogous art and a proper reference for the obviousness challenges.
RulingsFinal written decision- Obviousness (§103) › Analogous artNon analogous artNot shown unpatentableNot shown unpatentable
“A reference qualifies as prior art for an obviousness determination only when it is analogous to the claimed invention. See In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). The Federal Circuit has laid out two separate tests to determine whether a reference is analogous art to the claimed invention, i.e., whether one of ordinary skill in the art would even look to the 2004). They are: “(1) whether the art is from the same field of [the inventor’s] endeavor” and “(2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Id.; see also In re Klein, 647 F.3d at 1348.” slip op. at 10
Patent outcomesUS 8,194,924 not shown unpatentable§ 103 obviousnessPatents in suitUS 8,194,924 - Medtronic Corevalve LLC / Medtronic, Inc. v. Speyside Medical, LLCNo claims unpatentablePTAB · 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 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,377,118 - Abs Global, Inc. / Genus, PLC v. Cytonome/St, LLCNo claims unpatentablePTAB · Apr 28, 2022 · IPR2021-00088 · APJ James A Worth · IPR · Final written decision
Claims 1, 2, 6, 8, and 9 were not shown unpatentable because Simonnet disclosed split sample streams, and Petitioner did not adequately show a reason to modify it to form a single stream.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedDecided for patent owner
“focused split sample typically would not allow two cells to arrive at the inspection region at once, because there is not enough space for two 10-μm cells to travel side by side.” See Ex. 1054 ¶ 21 (citing Ex. 1005, 5662) (emphasis added). The qualifier “typically” for two cells not arriving at the same time does not indicate that there would be no split stream. And Dr. Issadore seems to concede there could be a split sample. Id. Further, Dr. Issadore does not state which dimensions of which of Simonnet’s channels that he is using as a reference.27 We determine that Dr. Issadore provides insufficient evidence and reasoning for an understanding that there would be a single stream if mammalian cells were used, in addition to making a statement that stops short of that conclusion. Although not argued by Petitioner nor discussed by Dr. Issadore, Simonnet does state: “we expect the HTD to be compatible with cells up to ~15 µm in size.” Ex. 1005, 5662. Simonnet also states: “We expect that with the improvements in optics and detection electronics, a cytometry system based on the HTD would match the throughput, sensitivity, and accuracy of commercial flow cytometers and would be an adequate tool for assaying fluorescently marked live cells.” Id. These statements can be fairly read as a statement of reasonable expectation of success of using mammalian cells in the device. However, Simonnet is silent as to whether the mammalian cells would be in a single stream, and if anything, Simonnet appears to be inviting further experimentation. Accordingly, Petitioner has not provided adequate reasoning to modify Simonnet to form a single sample stream.” slip op. at 52
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In the Decision on Institution, we set forth our preliminary determination that a person of ordinary skill in the art at the relevant time would have had a bachelor’s or master’s degree in the field of bioengineering, mechanical engineering, chemical engineering, or analytical chemistry, or a related field and at least three years of experience in designing or developing microfluidic systems. See Dec. 10–11. Patent Owner does not dispute this definition. See PO Resp. 4. 6 The parties do not present or address objective evidence of non-obviousness in this proceeding. After considering all evidence and arguments anew, we determine that it is proper to maintain our definition of the level of skill in the art.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“sheath flow does not mean that “focusing” requires sheath flow. In other words, the Specification does not contain a definition of “focusing” that defines “focusing” as requiring “sheath flow.” As discussed above, the Specification does state “focusing (e.g., constricting).” See also Tr. 41:22– 42:8 (discussing the Specification of the ’439 patent). Whether or not this disclosure rises to the level of a definition, it indicates that focusing is understood to be constricting and does not mention “sheath flow.” Although sheath flow may, in certain cases, be a natural result of having multiple fluid focusing features (see Ex. 1001, 14:6), the claim itself does not require that focusing include sheath flow.11 11 In terms of resolving the dispute between the parties, the real question appears to be whether the sample stream that exits the focusing region must be a single sample stream or whether it may encompass split sample streams, a question that we address in the next subsection. Patent Owner’s ultimate argument appears to be that “focusing” requires a single sample stream because “focusing” requires sheath flow and sheath flow requires a single sample stream. However, we agree with Petitioner that persons of ordinary skill could still refer to split streams as having “sheath flow” (see Ex. 1054 ¶ 11; Ex. 1043, 2215, Fig. 10 and caption (“separated two-sample 3D sheath flow”); Ex. 1044, 2 (“multiple core-sheath flow”), and therefore, even if we agreed with Patent Owner that focusing requires sheath flow, that would not clarify whether “focusing” precludes split sample streams. In any event, we conclude that focusing does not require sheath flow. We recognize that there are examples in the Specification where there is sheath flow. E.g., Ex. 1001, 5:30–32 (“Certain embodiments described herein relate [to] systems and methods for producing a sheath flow . . .”), 10:35–37 (“The illustrated core stream forming geometry 400 provides improved sheath flow capabilities and thus improved sample focusing capabilities.”). However, case law generally counsels against importing limitations from the Specification into the claims. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1323 (“To avoid importing limitations from the specification into the claims, it is important to keep in mind that the purposes of the specification are to teach and enable those of skill in the art to make and use the invention and to provide a best mode for doing so.”).12 We, therefore, do not import “sheath flow” into the definition of focusing.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Therefore, we construe “the sample stream” in the claim phrase “configured to focus the sample stream” to refer to a singular stream. c) Conclusion as to “focusing” and “configured to focus the sample stream” We maintain our construction of “focusing” as “pinching, confining, squeezing, or constricting” and decline to import additional requirements such as sheath flow into the term “focusing.” Nevertheless, we construe “the sample stream” in the claim phrase “configured to focus the sample stream” to refer to a singular stream.” slip op. at 28
Patent outcomesUS 10,583,439 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,583,439 - Shenzhen Buxiang Network Technology Co., Ltd. v. Sun Pleasure Co. LimitedNo claims unpatentablePTAB · 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 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,353,555 - Lenovo Holding Company, Inc. / Lenovo (United States) Inc. et al. v. Dodots Licensing Solutions LLCNo claims unpatentablePTAB · Jan 5, 2021 · IPR2019-01279 · APJ Sharon Fenick · IPR · Final written decision
Claims 1, 8–13, and 20–24 were not shown unpatentable under any asserted §103 ground because the prior art did not teach a separate NIM template excluding executable code.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“a bachelor’s degree in Electrical or Computer Engineering, Computer Science, or a related field and have three or more years of experience” in the field. Pet. 8 (citing Ex. 1003 (“Madisetti Decl.”) ¶ 44). Patent Owner does not provide an alternative description of the proper level of ordinary skill or comment on Petitioner’s proposal. Petitioner’s proposal appears to be consistent with the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required where the prior art itself reflects an appropriate level and a need for testimony is not shown). We adopt this proposal for this Final Written Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1. “outside of and separate from any graphical user interface of any other application” In the Petition, Petitioner requests that we construe one term, found in element 1.F of claim 1: that presentation of the viewer graphical user interface (“GUI”) defined by the networked information monitor template be “outside of and separate from any graphical user interface of any other application.” Pet. 4–8. Petitioner argues that the correct construction should be “so that the viewer [graphical user interface] is distinct from and not presented within the frame of any other GUI generated by another application.” Id. Because our ultimate decision does not rest on the construction of this claim term, we do not construe it. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“The definition of NIM provided in the Specification describes a frame “through which content is optionally presented.” Ex. 1001, 5:21–24. Claim 1 also describes the subject of the definition in a NIM template alternatively as (a) a NIM (in 1.C), (b) “a viewer graphical user interface having a frame within which time-varying content in a web browser-readable language may be presented on a display associated with the client computing device” (in 1.B), or (c) a “viewer graphical user interface” (in 1.D, 1.F, 1.G). Id. at consistent with the use in the claim. With respect to the word “optionally” in the Specification definition, we note that, in the claims, time-varying content is recited as being presented on the display within a frame (element 1.G and the last element of claim 13). Id.; see also id. at 43:61–44:31. For these reasons, we determine that the correct construction of a NIM is “a fully configurable frame, with one or more controls, through which content is presented to the user,” and this is the interpretation we apply here.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“In one embodiment, the NIM definitions are defined using Extensible Markup Language (XML), so that the NIM as a whole–the frame and the content within the viewer––is advantageously as flexible as standard web content. NIMs are extremely flexible, because the definition of the NIM is content, rather than compiled code. The NIM definition defines the structure of the NIM, and everything that is visible in a NIM is based on standard Internet content, such as HTML, dHTML, or GIFs, and is referenced or pointed to by the NIM definition. An “application”–type NIM, such as a web calendar or web mail, may be changed by the user, by the content provider, or by other content, while advantageously avoiding the need to distribute and support a hard-coded compiled application. The definition of a NIM thus includes everything that is needed for the NIM to be rendered and filled with Internet content. Id. at 21:45–60 (emphases added). From this disclosure, we understand that the Specification prohibits the NIM template from using compiled code or an executable application. Our review of the Specification did not identify disclosure of use of compiled code or an executable application by the NIM template.” slip op. at 16
Patent outcomesUS 8,510,407 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,510,407 - Oticon Medical AB / Oticon Medical LLC et al. v. Cochlear LimitedNo claims unpatentablePTAB · Oct 14, 2020 · IPR2019-00975 · APJ James A Worth · IPR · Final written decision
Claims 1–12, 14, 16, 17, 25, 28, 33–35, 37–41, and 45–47 were not shown unpatentable because Petitioner failed to establish a rationale to combine Westerkull ’794 and Choi.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“At the oral hearing, Petitioner acknowledged that the differences between the parties’ assertions regarding the level of skill in the art would not be dispositive. Tr. 25:12–26:11. In view of the lack of material dispute on this issue, we adopt Patent Owner’s asserted level of skill, which we find to be supported by the testimony of Dr. Rentschler. See Ex. 2037 ¶¶ 54–55; see also Tr. 26:10–11 (Counsel for Petitioner: “We agree that the issues really here are highly mechanical.”).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“We now turn to the issue of whether the preamble of claim 1 is limiting. Petitioner argues that the preamble recites an intended use because the body of claim 1 recites the structural limitations but the preamble does not. Pet. Supp. Br. 3. Petitioner also argues that the preamble recites an intended use because, in another case between the same parties involving a different claim relating to the same subject matter, the court concluded that the preamble recited an intended use. Id. at 3 (citing Cochlear Bone Anchored Sols. AB v. Oticon Med. AB, 958 F.3d 1348, 1355 (Fed. Cir. 2020)). Patent Owner argues that the preamble is limiting because the phrase “the bone” has its antecedent basis in the phrase “a skull bone” in the preamble. PO Supp. Br. 3 (citing Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008)). We determine, as a matter of reading the words of the claim, that the antecedent basis for “the bone” is “a skull bone” in the preamble of claim 1. See Ex. 1001, 5:56–57. Accordingly, we determine that the preamble is limiting. See Energizer Holdings, Inc. v. Int’l Trade Comm’n, 436 F.3d 1366 (Fed. Cir. 2006) (“anode gel” was understood to be the antecedent basis for “said zinc anode”).9 In other words, it is a requirement that the prosthesis is structured so that it is appropriate for being anchored into the skull bone. See Catalina 9 Patent Owner also argues that the cases relied on in the Petition to argue that the preamble is not limiting stand for the opposite proposition because, in those cases, the preambles were limiting because they introduced or defined terms later used in the claims. PO Supp. Br. 4 n.1 (citing Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305–06 (Fed. Cir. 1999); Rowe v. Dror, 112 F.3d 473, 478-79 (Fed. Cir. 1997)). We agree with Patent Owner that the statement of law in the Petition, i.e., that a preamble may recite an intended use when the body of the claim recites all structural elements (see Pet. 19), is not dispositive of this case because the body of the claim refers back to the preamble. Marketing International, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (“dependence on a particular disputed preamble phrase for antecedent basis may limit claim scope because it indicates a reliance on both the preamble and claim body to define the claimed invention.”). 2. the preamble: “bone fixture configured to anchor to bone” (claim 8) For similar reasons as for the preamble of claim 1, we determine that the preamble of claim 8 is limiting, i.e., because it provides antecedent basis for “the bone” in the body of the claim. However, the preamble of claim 8 only refers to “bone” and not to “a skull bone” and therefore does not itself impose a limitation of a “skull bone.” Compare Ex. 1001, 6:22, with id. at 5:56–57.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“means “a channel, distinct from the screw thread and distinct from the flange, extending around the cylindrical portion of the main body of the anchor, having an inner diameter and an outer diameter.” Pet. 20. Petitioner also asserts that a person of ordinary skill would understand that a circumferential groove is provided to “exert a compressive radial force on the skull bone to improve stability of the anchoring fixture.” Id. (citing Ex. 1013, 3; Ex. 1002 ¶ 36). The District Court construed “circumferential groove” to mean “a narrow channel extending around the cylindrical periphery of the main body of the implant.” Ex. 3001, 33.10” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“In response to our question inviting further briefing, Petitioner submits that “periphery” refers to the widest portion of the fixture inserted into the skull and distinct from the flange. See Pet. Reply 2. Patent Owner does not comment on the question. See PO Resp. 15–17. For purposes of this Decision, we determine that it is not necessary to further construe the term “periphery.” See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claims are construed only to the extent necessary to resolve a dispute). 4. “wherein the anchoring fixture is configured for anchoring a hearing” slip op. at 14
Patent outcomesUS 9,838,807 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,838,807 - Lornic Design, Inc. v. Humboldt B.V.No claims unpatentablePTAB · May 26, 2020 · IPR2019-00346 · APJ Hyun J Jung · IPR · Final written decision
Claims 1–5 and 7–22 were not shown unpatentable because Petitioner did not establish that Machacek, Breitschmid, or Plamper was analogous art.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“Bonenberger has significant education and experience in industrial engineering and with snap-fit applications. Ex. 1012 ¶¶ 2–5; Ex. 1013; Ex. 2040, 63:24–64:11, 66:13–67:12. Mr. Bonenberger’s testimony about snap-fit connections and their application is potentially helpful in determining the scope of the knowledge of one of ordinary skill in the art and whether the asserted references could be combined. Regarding whether the testimony lacks sufficient basis in facts or data, Mr. Bonenberger’s declaration expressly indicates that Mr. Bonenberger is opining based on his knowledge and experience and providing his opinion of what one of ordinary skill in the art would have understood or would have done. See Ex. 1012 ¶¶ 11 (“I have also relied upon my education, training and experience in the fields of mechanical attachments in general and, in particular, snap-fit attachment development for product applications.”), 14 (“I agree that a PHOSITA will have a bachelor’s degree in mechanical engineering or equivalent work experience.”), 16 (“A PHOSITA would make no such distinction.”), 18 (“For example, there is nothing in the relative forces experienced by the snap-fit in the application of the ‘225 that would lead a PHOSITA to believe . . . ”), 19 (“A PHOSITA would have easily understood . . . ”), 20 (“A PHOSITA would have easily understood . . . ”), 21 (“A PHOSITA would have easily understood . . . ”), 22 (“Both of these are well within the understanding of a PHOSITA.”), 23 (“Such a construction would be well within the understanding of a PHOSITA . . . ”), 25 (“In reviewing Machacek, Breits[ch]mid and Plamper, there is nothing in these patents that would cause a PHOSITA to . . . ”); Ex. 2040, 68:14–21 (Mr. Bonenberger answering “yes” to the question “[s]o, this is an example of your talking from the perspective of what a PHOSITA would understand?”). Mr. Bonenberger has reliably applied the principles and methods to the facts of this proceeding. Furthermore, even if Mr. Bonenberger does not meet the parties’ definition of one of ordinary skill in the art, his testimony, in combination with other record evidence, is useful in determining what he believes one of ordinary skill in the art may have known at the relevant time period about snap-fit connections and their application. Thus, we deny Patent Owner’s Motion to Exclude with respect to Exhibit 1012.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on the full record before us, we see no reason to disturb our preliminary finding regarding the level of ordinary skill in the art. Accordingly, we maintain and reaffirm that one of ordinary skill in the art would have “a bachelor’s degree in mechanical engineering or with equivalent work experience.” Inst. Dec. 10–11 (citing Pet. 11; Ex. 1003 ¶ 46). This level of skill in the art is consistent with the disclosure of the ’225 patent and the prior art of record.” slip op. at 21
- Prior constructionPrior construction adoptedDecided for petitioner
“adopted the interpretations quoted above for “female receiving end,” “narrowed entrance,” “the receiving space being substantially larger than the narrowed entrance channel along the longitudinal axis of the whip,” and “the narrowed entrance channel is directed facing away from the profiled side of the whip.” Inst. Dec. 12. Patent Owner agrees with Petitioner that the terms listed in the Petition should have the same interpretations as determined by the district court. PO Resp. 5 (citing Pet. 12). As shown above in emphases, some interpretations include “during use of the brush element.” Petitioner argues that “[n]owhere does the Court require, nor did the Board adopt a definition that requires, that the ‘use’ be the specific cleaning of animal carcasses shown in the ’225 patent.” Pet. Reply 10. We do not need to decide whether the use is specific to cleaning animal carcasses because, even if the use were not so specific, for the reasons set forth below in Section G., we would still determine that Machacek, Breitschmid, and Plamper are not in the same field of endeavor as the ’225 patent, are not reasonably pertinent to the problem facing the inventor of the ’225 patent, and would not have logically commended themselves to the inventor’s attention in considering the problem of the ’225 patent. The full record before us, thus, provides no reason to modify our preliminary decision to adopt the district court’s interpretations for the terms listed and discussed above. We, therefore, continue to apply the above-identified district court’s interpretations for (1) “female receiving space,” (2) “narrowed entrance channel” and “narrowed entrance,” (3) “the receiving space being substantially larger than the narrowed entrance channel along the longitudinal axis of the whip,” and (4) “the narrowed entrance channel is directed facing away from the profiled side of the whip” to resolve the parties’ dispute. Pet. 12–14; Ex. 1011, 16.” slip op. at 23
- Obviousness (§103) › Analogous artNon analogous artNot shown unpatentable
“been brought to the attention of the ordinary skilled artisan, the application of Machacek to Debaere, despite the differences in male and female connections and the forces involved, would have been a matter of ordinary skill to a “person of ordinary creativity.” See Pet. 17–19; Pet. Reply 2–8; see also Tr. 45:6–47:2 (Patent Owner’s counsel addressing ordinary skill). However, Petitioner does not argue sufficiently or present sufficient evidence that Machacek logically would have commended itself to the inventor’s attention in considering the problem of the ’225 patent. See Pet. 17–19; Pet. Reply 2–8; Ex. 1003 ¶ 60. Specifically, Petitioner does not present sufficient argument and evidence why one of ordinary skill in the art would have looked to Machacek for a solution to the problem addressed by the ’225 patent or why Machacek’s pinwheel testing device that reduces the risk of transferring blood borne disease logically would have commended itself to an inventor’s attention when considering the problem of replacing brush elements attached to a rotatable body that imparts rotation to the brushes rotatably attached to it. Clay, 966 F.2d at 659. Even considering the structural similarities of Debaere and Machacek, which is Petitioner’s basis for combining the references, the full record does not explain why or how one of ordinary skill in the art would have considered Machacek at all so that the asserted structural similarities would have been perceived or Machacek would have prompted applying a particular connection to Debaere. Scientific Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir. 2014) (“The pertinence of the reference as a source of solution to the inventor’s problem must be recognizable with the foresight of a person of ordinary skill, not with the hindsight of the inventor’s successful achievement.”).” slip op. at 47
Patent outcomesUS 9,433,225 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,433,225 - Eli Lilly And Company v. Teva Pharmaceuticals International GmbHNo claims unpatentablePTAB · Mar 31, 2020 · IPR2018-01711 · APJ James A Worth · IPR · Final written decision
The Board held claims 1–18 of the ’907 patent not unpatentable over Olesen, Tan, and Queen under §103, finding Lilly had not met its burden.
RulingsFinal written decision- Skill levelSkill level board ownOther
“appreciable difference in the parties’ respective definitions of a person of ordinary skill in the art. Inst. Dec. 8. Accordingly, we determined for purposes of our Institution Decision that a person of ordinary skill in the art” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“2. “effective amount” The term “effective amount” is recited in all of the independent” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Reply. In fact, Petitioner argues that “[t]he prior art expressly recognized the downside of treating migraine patients with CGRP inhibitors having a short half-life,” citing to a report that CGRP8-37 (a peptide fragment of CGRP) “‘proved ineffective in migraine treatment’ due to ‘its low potency and short half-life.’” Pet. 31 (citing Ex. 1031, 323; Ex. 1014 ¶ 124) (emphasis by Petitioner). Accordingly, we find that Petitioner has not sufficiently established that a POSA would have been motivated to humanize an anti-CGRP antibody fragment.” slip op. at 93
- ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part
“the cross-examination of Dr. Ferrari as beyond the scope of Dr. Ferrari’s direct testimony. Mot. Excl. 9. Upon review of the Ferrari Declaration, Exhibit 2268, we agree that questions on cyclic AMP were beyond the scope of the Ferrari Declaration. Accordingly, we grant this aspect of the motion.” slip op. at 159
Patent outcomesUS 9,884,907 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,884,907 - Eli Lilly And Company v. Teva Pharmaceuticals International GmbHNo claims unpatentablePTAB · Mar 31, 2020 · IPR2018-01710 · APJ Richard J Smith · IPR · Final written decision
The Board found that Lilly did not prove claims 1, 3, 4, 8–17, 19, 20, and 24–31 of the ’045 patent, or claims 1–18 of the ’907 and ’908 patents, unpatentable over Olesen, Tan, and …
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“appreciable difference in the parties’ respective definitions of a person of ordinary skill in the art. Inst. Dec. 8. Accordingly, we determined for purposes of our Institution Decision that a person of ordinary skill in the art” slip op. at 13
- ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part
“conclusion based on underlying factual findings. Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1375 (Fed. Cir. 2018) (citing Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1356 (Fed. Cir. 2018)). The underlying factual findings include whether the reference was publicly accessible. Id. (citing In re NTP, Inc., 654 F.3d 1279, 1296 (Fed. Cir. 2011)). In an inter partes review, the petitioner bears the burden of establishing by a preponderance of the evidence that a particular document is a printed publication. Id. (citing Medtronic Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018)); see also In re Wyer, 655 F.2d 221, 227 (CCPA 1981) (a party asserting a reference as a prior art printed publication should provide sufficient proof of accessibility).” slip op. at 152
- Strike new argumentNew argument consideredDenied
“(Ex. 2239), and also the opportunity to submit a Sur-reply (Paper 43). Therefore, we determine that Patent Owner has failed to meet its burden to show that the arguments and evidence should be stricken. See 37 C.F.R. § 42.20; Genzyme Therapeutic Prods. L.P. v. Biomarin Pharm Inc., 825 F.3d 1360, 1367 (Fed. Cir. 2016); see also Anacor Pharms., Inc. v. Iancu, 889 F.3d 1372, 1380–81 (Fed. Cir. 2018) (reply may document the knowledge that skilled artisans would bring to bear in reading the prior art identified as producing obviousness). Accordingly, this aspect of the motion is denied.” slip op. at 163
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“Reply. In fact, Petitioner argues that “[t]he prior art expressly recognized the downside of treating migraine patients with CGRP inhibitors having a short half-life,” citing to a report that CGRP8-37 (a peptide fragment of CGRP) “‘proved ineffective in migraine treatment’ due to ‘its low potency and short half-life.’” Pet. 31 (citing Ex. 1031, 323; Ex. 1014 ¶ 124) (emphasis by Petitioner). Accordingly, we find that Petitioner has not sufficiently established that a POSA would have been motivated to humanize an anti-CGRP antibody fragment.” slip op. at 93
Patent outcomesUS 8,586,045 not shown unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,586,045 - Eli Lilly And Company v. Teva Pharmaceuticals International GmbHNo claims unpatentablePTAB · Mar 31, 2020 · IPR2018-01712 · APJ James A Worth · IPR · Final written decision
The Board held claims 1–18 of the ’908 patent not unpatentable because Lilly failed to prove the Olesen, Tan, and Queen obviousness ground by a preponderance of the evidence.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Reply. In fact, Petitioner argues that “[t]he prior art expressly recognized the downside of treating migraine patients with CGRP inhibitors having a short half-life,” citing to a report that CGRP8-37 (a peptide fragment of CGRP) “‘proved ineffective in migraine treatment’ due to ‘its low potency and short half-life.’” Pet. 31 (citing Ex. 1031, 323; Ex. 1014 ¶ 124) (emphasis by Petitioner). Accordingly, we find that Petitioner has not sufficiently established that a POSA would have been motivated to humanize an anti-CGRP antibody fragment.” slip op. at 93
- ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part
“form, not relevant, vague, mischaracterized the witnesses’ prior testimony, called for a legal conclusion, lacked clarity, or contained compound questions. Mot. Excl. 7–12. We consider Patent Owner’s arguments in this regard to address issues of weight rather than admissibility, and we deny these aspects of the motion. See Corning Inc. v. DSM IP Assets B.V., IPR2013-00053, Paper 66 at 19 (PTAB May 1, 2014) (sitting as a non-jury tribunal, the Board may assign appropriate weight to evidence presented) (citing Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941)).” slip op. at 158
- Strike new argumentNew argument consideredDenied
“(Ex. 2239), and also the opportunity to submit a Sur-reply (Paper 43). Therefore, we determine that Patent Owner has failed to meet its burden to show that the arguments and evidence should be stricken. See 37 C.F.R. § 42.20; Genzyme Therapeutic Prods. L.P. v. Biomarin Pharm Inc., 825 F.3d 1360, 1367 (Fed. Cir. 2016); see also Anacor Pharms., Inc. v. Iancu, 889 F.3d 1372, 1380–81 (Fed. Cir. 2018) (reply may document the knowledge that skilled artisans would bring to bear in reading the prior art identified as producing obviousness). Accordingly, this aspect of the motion is denied.” slip op. at 163
Patent outcomesUS 9,884,908 not shown unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,884,908
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.