• 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
• Becton, Dickinson And Company v. B. Braun Melsungen AGNo claims unpatentable
  PTAB · Dec 12, 2018 · IPR2017-01588 · APJ Michael L Woods · IPR · Final written decision

  The Board found claims 12, 13, 20–23, and 29 not shown unpatentable under any of four § 103 combinations; the contingent motion to amend was dismissed as moot.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner

    “Because the term “means” is not used, there is a presumption that the limitation is not subject to § 112 ¶ 6, and Petitioner has not overcome this presumption. See Williamson, LLC, 792 F.3d at 1349 (explaining that the presumption is overcome “if the challenger demonstrates that the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function’”) (internal citation omitted). The claims do not simply recite a “needle protective device,” without more, but explicitly require that the “needle protective device [be] positioned proximally of the valve and at least in part around the needle and distal of a proximal end of the second hub in a ready position and configured to prevent unintended needle sticks in a protective position.” Ex. 1001, 13:58– 61 (emphasis added to structural limitations of claim 12); see also id. at 14:51–55 (reciting similar structure in independent claim 23). Petitioner fails to address these structural limitations in its proposed claim construction, instead focusing only on the three words “needle protective device.” See Pet. 11–15. Moreover, Petitioner’s proposed construction would seemingly render superfluous several of these other claimed structural features. As argued by Patent Owner, we determine that the needle protective device limitation recites sufficient structure. Mr. Meyst explains how a person of ordinary skill in the art “would recognize that the claimed ‘needle protective device’ refers to the class of structures included in safety IV catheters that prevent unintended needle-sticks by covering (i.e., protecting or guarding) the needle tip.” Ex. 2001 ¶ 56 (citing Ex. 2014, which is cited in the ’735 patent). We find Mr. Meyst’s testimony persuasive.” slip op. at 13

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

    “of the claimed limitation. Here, the claims require the “arm” to extend distally of the third hub. Ex. 1001, 13:34–14:59. “[I]n determining the ordinary and customary meaning of the claim term as viewed by a person of ordinary skill in the art, it is appropriate to consult a general dictionary definition of the word for guidance.” See Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (citation omitted). In consulting general dictionary definitions, including that submitted by Petitioner (Ex. 1008), we find “arm” to be defined as: “any armlike part or attachment, as the tone arm of a phonograph” (www.dictionary.com (last visited Nov. 13, 2017) (emphasis added)); “[a] part attached to or projecting from something” (Ex. 1008); “a long thin piece that is connected to the main part of a machine, structure, etc., and that looks or moves like a human arm” (www.learnersdictionary.com (last visited Nov. 13, 2017) (emphases added)). We also consult the prosecution history of record. In an amendment dated February 7, 2013, the applicant asserted that “[t]he scope of independent claims [1 and 23] can be found in FIGs. 13 and 14 of the instant application and corresponding written description.” Ex. 1010, 10. We now review the Specification, namely, Figures 13 and 14 and their accompanying description. We find that these figures depict an “arm” extending distally of a “third hub,” and to illustrate this structure, we reproduce Figure 13 of the ’247 patent, below: The ’247 patent describes: The third housing 204 incorporates a pair of arms 210 each comprising a hook 212. The two hooks 212 are configured to engage the two bumps 36 to retain the third housing 204 to the catheter hub 14 in a ready to use position. The two arms 210 are preferably flexible to provide a gripping force against the two bumps 36, which is higher than the frictional force to withdraw the needle through the tip protector 202, hemostatic valve 46, and catheter 12. Alternatively the two arms 210 can be biased radially outward to increase the gripping force. Further, the two arms can be biased inwardly against the needle shaft to decrease the gripping force after the needle is withdrawn proximal of the arms 210. Ex. 1001, 11:33–45 (emphasis added).” slip op. at 18

  • Skill levelSkill level board ownDecided for petitioner

    “Neither Patent Owner nor Petitioner disputes our initial determination of a person having ordinary skill in the art (“POSITA”), and we see no reason to revisit it here. See, generally, PO Resp.; see also, generally, Pet. Reply. Accordingly, and as explained in our Decision to Institute, we determine that a POSITA would be either a medical practitioner (e.g., a nurse or doctor) having at least some experience with vascular catheter devices, or a person with a technical degree (e.g., associate’s degree in engineering or physics) and having at least some experience with vascular catheter devices. Paper 8, 17–18.” slip op. at 22

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Having considered Callaway in its entirety, and after weighing the competing testimony of Mr. Griffis and Mr. Meyst, we agree with Patent Owner and credit its expert that Callaway’s “third hub” 21 would do “nothing more than hold the spring clip in place until the needle is withdrawn,” and that the “only embodiment in which the inner catheter hub (21) potentially adds any needle protection is in the Critikon version” (PO Resp. 35), which does not integrate Woehr-630’s safety clip (Ex. 1004 ¶ 62), and which Petitioner does not rely on (see Pet. 26–27). Accordingly, because Petitioner fails to demonstrate by a preponderance of the evidence that Callaway teaches Woehr-630’s spring clip retained in hub 21 after the needle is withdrawn, Petitioner has not shown that claims 12, 13, 20–23, and 29 are unpatentable over Woehr, Callaway, and Sutton.” slip op. at 50

  Patent outcomesUS 8,460,247 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,460,247
• Skechers U.S.A., Inc. v. Nike, Inc.No claims unpatentable
  PTAB · Jun 28, 2018 · IPR2017-00621 · APJ Grace Karaffa Obermann · IPR · Final written decision

  The sole challenged claim was not shown unpatentable because Petitioner failed to identify a qualifying Rosen reference for its obviousness challenges.

  RulingsFinal written decision

  • BurdenFwd all claims patentableNot shown unpatentable

    “Petitioner bears “the burden of proving a proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C. § 316(e). Our rules require a successful petition to include “a detailed explanation of the significance of the evidence including material facts.” 37 C.F.R. § 42.22(a)(2)). An issue bearing on the challenge is whether and how the claimed channel element impacts the “visual impression created by the patented design as a whole.” Durling, 101 F.3d at 103; see Ex. 1001, Fig. 1 (depicting an elongated region, of relatively darker shading, superimposed over about two thirds of a sipe that bisects the claimed heel region).” slip op. at 18

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “ordinary skill in the art would have had either (1) a degree in Industrial Design combined with some work experience as a designer of footwear designs; or (2) two years of direct experience creating footwear designs. 9 The Petition asserts U.S. Patent No. 6,115,945 (Ex. 1006, “the ’945 patent”) as a background reference. See, e.g., Pet. 5, 34. Dec. 7. That definition is consistent with Petitioner’s proposed definition. Pet. 36 (Petitioner’s definition); Reply 2 (Petitioner, reasserting that definition). Patent Owner, for its part, raises no persuasive information tending to establish a different definition. Resp. 2 (Patent Owner, essentially acquiescing to Petitioner’s definition). That definition also is consistent with the disclosures reflected in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 4

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

    “D. Claim Construction The claim of the ’781 patent does not require express construction for the purposes of this decision. On that point, we observe that Figures 1–3 of the ’781 patent (Ex. 1001) reflect the scope of the patented design. To the extent any explanation of that scope is necessary to our decision, we provide it below in our analysis of the asserted challenge. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 5

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

    “Conclusions Regarding the First Prong of the Durling Test A preponderance of the evidence supports a conclusion that Petitioner fails to take account adequately of the channel element of the patented design and, therefore, fails also to identify “the correct visual impression created by the patented design as a whole”—a required first step in identifying a Rosen reference. Durling, 101 F.3d at 103. That failure, standing alone, justifies our conclusion that Petitioner fails also to prove by a preponderance of the evidence that the challenged claim of the ’781 patent is unpatentable.” slip op. at 20

  Patent outcomesUS D723,781 not shown unpatentable
  Claim construction§ 103 obviousness
• Skechers U.S.A., Inc. v. Nike, Inc.No claims unpatentable
  PTAB · Jun 28, 2018 · IPR2017-00620 · APJ Grace Karaffa Obermann · IPR · Final written decision

  The Board held the challenged claim not shown unpatentable because Petitioner failed to identify a Rosen reference creating basically the same overall visual impression.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. The Designer of Ordinary Skill As we did in our institution decision, we find that a designer of ordinary skill in the art would have had either (1) a degree in Industrial Design combined with some work experience as a designer of footwear designs; or (2) two years of direct experience creating footwear designs. 9 The Petition asserts U.S. Patent No. 6,115,945 (Ex. 1006, “the ’945 patent”) as a background reference. See, e.g., Pet. 5, 33. Dec. 7. That definition is consistent with Petitioner’s proposed definition. Pet. 35 (Petitioner’s definition); Reply 2 (Petitioner, reasserting that definition). Patent Owner, for its part, raises no persuasive information tending to establish a different definition. Resp. 2 (Patent Owner, essentially acquiescing to Petitioner’s definition). That definition also is consistent with the disclosures reflected in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 4

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

    “D. Claim Construction The claim of the ’783 patent does not require express construction for the purposes of this decision. On that point, we observe that Figures 1–3 of the ’783 patent (Ex. 1001) reflect the scope of the patented design. To the extent any explanation of that scope is necessary to our decision, we provide it below in our analysis of the asserted challenge. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 5

  • BurdenFwd all claims patentableNot shown unpatentable

    “Petitioner bears “the burden of proving a proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C. § 316(e). Our rules require a successful petition to include “a detailed explanation of the significance of the evidence including material facts.” 37 C.F.R. § 42.22(a)(2)). An issue bearing on the challenge is whether and how the claimed channel element impacts the “visual impression created by the patented design as a whole.” Durling, 101 F.3d at 103; see Ex. 1001, Fig. 1 (solid concentric ovals, which depict a channel element near the center of the claimed grid-like pattern of pads).” slip op. at 16

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

    “As a starting point, to make out a successful obviousness challenge, Petitioner must identify “a reference, a something in existence, the design characteristics of which are basically the same as the claimed design in order to support a holding of obviousness. Such a reference is necessary whether the holding is based on the basic reference alone or on the basic reference in view of modifications suggested by secondary references.” Rosen, 673 F.2d at 391. Accordingly, “the first step in an obviousness analysis for a design patent requires a search of the prior art for a primary reference,” which requires the tribunal “to: (1) discern the correct visual impression created by the patented design as a whole; and (2) determine whether there is a single reference that creates ‘basically the same’ visual impression.” Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996). We address the two prongs of the Durling test in turn below.” slip op. at 6

  Patent outcomesUS D723,783 not shown unpatentable
  Claim construction§ 103 obviousness
• Baker Hughes Incorporated / Baker Hughes Oilfiled Operations, Inc. v. Packers Plus Energy Services, Inc.No claims unpatentable
  PTAB · Aug 31, 2017 · IPR2016-00650 · APJ Carl M Defranco · IPR · Final written decision

  The Board held that claims 14 and 17–26 were not shown unpatentable because Thomson lacked the claimed first sleeve and the combinations lacked a reason to add Echols’s sleeves.

  RulingsFinal written decision

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

    “At the institution stage, we construed the term “engaged” according to its plain and ordinary meaning as defined in the dictionary—“involved in activity.” See Merriam-Webster’s Dictionary, 383 (10th ed. 2000) (Ex. 3001). Thus, in the context of the claims, we found that the first sleeve must be actively involved in moving the sliding sleeve, as distinguished from standing simply in physical contact with the sliding sleeve. In other words, as used in the claims, the term “engaged” connotes some sort of dynamic action on the part of the first sleeve relative to the sliding sleeve. Neither party disputes that construction. Indeed, both parties agree that our construction is consistent with “a process of two events that are temporally linked,” first, “the physical relationship between the first sleeve and the sliding sleeve changes to one of engagement,” and second, “the first sleeve moves the sliding sleeve.” Pet. 19; see also PO Resp. 2 (agreeing that the Board’s construction is consistent with the petitioner’s proposed construction of “engaged and moved”).” slip op. at 6

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

    “As construed above, and agreed to by the parties, the term “engaged and moved” as used in claims 14 and 25 requires that the first sleeve act independently of the sliding sleeve to move the sliding sleeve away from the port. In contrast, the sliding sleeve arrangement of Thomson—shown in figure 5—includes an internal first sleeve (light grey) that acts as a “ball seat” for the sliding sleeve. Ex. 1002, 1, 2, Fig. 5. Rather than actuating sliding sleeve, Thomson’s internal first sleeve is “threaded” permanently within the sliding sleeve, and thus cannot act to engage and move the sliding sleeve away from the port, as required by claims 14 and 25. With that distinction in mind, we are not persuaded that Thomson anticipates claims 14 and 25.6 C.” slip op. at 7

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

    “According to Packers Plus, because Thomson describes a completion system where the wellbore is cemented and cased, the “the number of sleeves per zone does not dictate the number of injection points into the formation. Rather, the number of perforations in the casing dictates the number of injection points, whether there is a single sleeve per zone or multiple sleeves per zone.” Id. at 4. As such, Packers Plus argues, there is no reason to employ more sleeves in each of Thomson’s perforated zones, when the single sleeve per zone already disclosed by Thomson suffices to do the job. Id. We agree. As shown and described in Thomson, the wellbore is lined with cement, and perforations are made in the cement casing for each zone to be treated. Ex. 1002, 3 (“Before running the completion, each well was perforated with tubing-conveyed perforating (TCP) guns.”); Fig. 3 (showing cement-lined wellbore). The tubing string is then run into the perforated, cased wellbore, “with isolation of each zone being achieved by hydraulic-set packers positioned on each side of an MSAF tool,” which Thomson describes as “a sliding sleeve device” that is “the ‘heart’ of the completion system.” Id. at 1, 2. Fracturing fluid is pumped into the tubing string, and “once the sleeve is moved to an open position,” it is ejected “into the tubing liner annulus” between the tubing string and the cased wellbore. Id. at 2 (emphasis added). But to ultimately reach the formation, the fracturing fluid in the annulus must pass through the perforations in Thomson’s cased wellbore. Given that fracturing fluid can only escape from the annulus and into the formation through the perforations in the cement casing, increasing the number of sleeves in each zone, as Baker Hughes suggests, would not equate to an increase of injection points into the formation. Instead, that is dictated by the number of perforations in the casing, as evidenced by the testimony of Packers Plus’s expert, Mr. McGowen, [i]t would be immediately clear to a POSITA the use of multiple Echols sleeves in a Thomson zone would not provide additional injection points into the formation. The only injection points into the casing are through perforations. If a POSITA wanted to modify Thomson to add additional injection points, he or she could add additional perforations in the casing, but there would be no reason to add additional sliding sleeves in a particular zone. Ex. 2003, 15:4─8 We find this testimony persuasive. With the perforations in the casing dictating the number of points where fluid can enter the formation, we find that a skilled artisan would not have have considered that additional sleeves in a particular zone would translate to a benefit of additional injection points.” slip op. at 14

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “to an increase of injection points into the formation. Instead, that is dictated by the number of perforations in the casing, as evidenced by the testimony of Packers Plus’s expert, Mr. McGowen, [i]t would be immediately clear to a POSITA the use of multiple Echols sleeves in a Thomson zone would not provide additional injection points into the formation. The only injection points into the casing are through perforations. If a POSITA wanted to modify Thomson to add additional injection points, he or she could add additional perforations in the casing, but there would be no reason to add additional sliding sleeves in a particular zone. Ex. 2003, 15:4─8 We find this testimony persuasive. With the perforations in the casing dictating the number of points where fluid can enter the formation, we find that a skilled artisan would not have have considered that additional sleeves in a particular zone would translate to a benefit of additional injection points.” slip op. at 15

  Patent outcomesUS 6,907,936 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,907,936
• General Electric Company v. United Technologies CorporationNo claims unpatentable
  PTAB · Aug 2, 2017 · IPR2016-00526 · APJ Hyun J Jung · IPR · Final written decision

  Claims 4–20 were not shown unpatentable over Young or McGarry because the evidence did not establish the proposed turbine heat-pipe modifications or a motivation to make them.

  RulingsFinal written decision

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

    “In summary, we find that the evidence cited by Patent Owner indicates that the ordinary and customary meaning of “turbine flowpath,” as would be understood by one of ordinary skill in the art in the context of the entire disclosure of the ’807 patent is “a section of the turbine through which combustion gases flow.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2011) (“Even under the broadest reasonable interpretation, the Board’s construction ‘cannot be divorced from the specification and the record evidence,’ and ‘must be consistent with the one that those skilled in the art would reach.’”). Accordingly, based on the complete record before us, we interpret “turbine flowpath” to mean “a section of the turbine through which combustion gases flow,” and we determine that “turbine flowpath” does not encompass a flowpath outside of a turbine.” slip op. at 18

  • Skill levelOther

    “Attia Decl. ¶ 4. Patent Owner argues that Petitioner “improperly define[s] the level of skill not to require heat pipe experience.” PO Resp. 14. In this case, the submitted prior art itself amply reflects an appropriate level of skill. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). Furthermore, the asserted differences in the level of skill do not affect our ultimate findings and conclusions. Patent Owner also argues that Dr. Attia has no relevant experience with heat pipes, Dr. Faghri is a “leader in the field of heat pipe design,” and Dr. Attia’s testimony should not outweigh Dr. Faghri’s testimony. PO Resp. 11–15. As discussed below in more detail, we consider each declarant’s testimony against the full record and find it to be unpersuasive in some instances. If the testimony is in conflict with other evidence, we give it appropriate weight. See, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”).” slip op. at 20

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

    “likely would transfer more heat to the bypass flowpath, the full record indicates that Petitioner provides insufficient argument or evidence as to how “significant gains in thrust production” can be achieved in view of the effects on the turbine explicitly described by Young. In its description of “cooling of turbine nozzle guide vanes,” Young teaches to limit the amount of heat taken from these vanes to “avoid cooling the working fluid flowing through the vanes, because this would adversely affect the efficiency of the downstream stages of the turbine.” Ex. 1005, 3:48–60; see also Spakovszky Decl. ¶¶ 38–44; Ex. 2020, 96:1–3 (Dr. Attia testifying that “[i]f you extract too much heat, you then do not have enough heat to extract the amount of work to spin the compressor and the fan”), 96:8–13 (Dr. Attia testifying that “[i]f you don’t give the turbine all the thermal energy it needs, it cannot produce the required mechanical work” and “you have to be very careful not to do that while attempting to cool the turbine”). Petitioner also notes that Young recognizes “cooling of the hot gas flow upstream of the last turbine stage can reduce the amount of work performed by the turbine” but contends it would not impact adversely turbine efficiency. Pet. Reply 10–11 (citing Attia Reply Decl. ¶ 6). Petitioner cites to paragraph 6 of the Attia Reply Declaration, which explains without evidentiary support that, because Young discloses “waste heat,” heat in the turbine can be transferred without adversely impacting turbine efficiency, in contradiction to Young’s express teachings to limit the amount of heat taken from turbine nozzle guide vanes (see Ex. 1005, 3:55– 60). Young teaches heat transfer to the bypass flow can increase thrust but also teaches cooling turbine nozzle guide vanes adversely affects downstream stages of a turbine that, in turn, would adversely affect bypass flow so as to reduce thrust. See Ex. 1005, 3:48–60, 4:71–74. Patent Owner’s Declarant testifies with support from a textbook (Exhibits 1014 and 20143) that Petitioner’s proposed modification may not increase thrust. Spakovszky Decl. ¶¶ 45–57 (citing Ex. 1014, 21, 28, 57–59; Ex. 2014, 6, 12, 10). We are persuaded by Dr. Spakovszky’s conclusion that “[i]f one were to move Young’s heat exchanger upstream into the turbine stages . . . there would be less energy available to spin the turbine wheel and therefore to spin the fan” which “would reduce the amount of thrust being generated by the fan.” Spakovszky Decl. ¶ 54. In view of the full record before us, Petitioner provides insufficient argument and evidence that the heat taken from turbine nozzle guide vanes can increase thrust without adversely affecting downstream turbine stages. Petitioner provides insufficient argument and evidence that transferring heat from a vane in the turbine to the bypass flow would produce enough thrust to compensate for the reduction in thrust from a less efficient turbine so as to result in “significant gains in thrust production.” Moreover, the full record provides insufficient argument and evidence that Petitioner’s proposed modification of Young would produce any more thrust than Young’s unmodified heat pipes in its exhaust flow.” slip op. at 29

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundDecided for patent owner

    “likely would transfer more heat to the bypass flowpath, the full record indicates that Petitioner provides insufficient argument or evidence as to how “significant gains in thrust production” can be achieved in view of the effects on the turbine explicitly described by Young. In its description of “cooling of turbine nozzle guide vanes,” Young teaches to limit the amount of heat taken from these vanes to “avoid cooling the working fluid flowing through the vanes, because this would adversely affect the efficiency of the downstream stages of the turbine.” Ex. 1005, 3:48–60; see also Spakovszky Decl. ¶¶ 38–44; Ex. 2020, 96:1–3 (Dr. Attia testifying that “[i]f you extract too much heat, you then do not have enough heat to extract the amount of work to spin the compressor and the fan”), 96:8–13 (Dr. Attia testifying that “[i]f you don’t give the turbine all the thermal energy it needs, it cannot produce the required mechanical work” and “you have to be very careful not to do that while attempting to cool the turbine”). Petitioner also notes that Young recognizes “cooling of the hot gas flow upstream of the last turbine stage can reduce the amount of work performed by the turbine” but contends it would not impact adversely turbine efficiency. Pet. Reply 10–11 (citing Attia Reply Decl. ¶ 6). Petitioner cites to paragraph 6 of the Attia Reply Declaration, which explains without evidentiary support that, because Young discloses “waste heat,” heat in the turbine can be transferred without adversely impacting turbine efficiency, in contradiction to Young’s express teachings to limit the amount of heat taken from turbine nozzle guide vanes (see Ex. 1005, 3:55– 60). Young teaches heat transfer to the bypass flow can increase thrust but also teaches cooling turbine nozzle guide vanes adversely affects downstream stages of a turbine that, in turn, would adversely affect bypass flow so as to reduce thrust. See Ex. 1005, 3:48–60, 4:71–74.” slip op. at 29

  Patent outcomesUS 7,966,807 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,966,807
• General Electric Company v. United Technologies CorporationNo claims unpatentable
  PTAB · Jun 26, 2017 · IPR2016-00531 · APJ Scott A Daniels · IPR · Final written decision

  GE did not prove claims 7–11 unpatentable over Willis and Duesler because it failed to show a skilled artisan would have substituted Duesler’s sleeve into Willis’s engine.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “The difference in opinion between declarants fails mainly to settle on a time frame, i.e. years of experience, in aircraft gas turbine engine design, that a person of ordinary skill in the art would generally have. These positions, however, are not as far afield as they might seem. We recognize from Dr. Abhari’s and Dr. Mattingly’s testimony that gas turbine aircraft engines and their operating conditions are functionally and structurally complex. See Ex. 1003 ¶¶ 21, 53, 55, 60; Ex. 2009 ¶ 38. From the testimony of both declarants we understand that a person of skill in the art of aircraft turbine design is not a newly minted mechanical or aeronautical engineer fresh from undergraduate, or even graduate studies, without a number of years of work experience in the field of aircraft engine design. See Ex. 1003 ¶ 4, and see Ex. 2009 ¶ 40. Our review of the prior art in conjunction with the declarants’ testimony informs us of the complexity of the structural and functional aspects of aircraft engine design and indicates that the level of ordinary skill in the art of aircraft turbofan engine design is fairly high, requiring significant time working in the field. We reconcile the declarants’ inconsistent statements as to years of work experience by determining that a person of ordinary skill in the art of gas turbine engines for aircraft would have a professional background that includes at least an M.S. degree in mechanical or aeronautical engineering and, along with whatever additional engineering background knowledge and skill set they possess, at least 5–10 years of work and study experience in design and analysis of aircraft gas turbine engines. We point out that regardless of the difference in years of experience asserted by the declarants, our ultimate findings and conclusions would be the same under either definition.” slip op. at 13

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

    “II. CLAIM CONSTRUCTION UTC asserts no construction for any claim terms. See PO Resp. Although GE proposed constructions for a number of claim terms in its Petition (Pet. 12–22), neither party disputes our initial determination that no claim term requires construction. See Inst. Dec. 5, and see Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those 2 GE supports its challenge with the Abhari Declarations (Exs. 1003, 1036). See infra. 3 William S. Willis, Quiet Clean Short-Haul Experimental Engine (QCSEE) Final Report (Aug. 1979) (Ex. 1011). 4 US 5,778,659 (July 14, 1998) (Ex. 1006 or Duesler ’659). terms which are in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 5

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “We are not persuaded, given the apparent necessity for years of testing, regulatory oversight, and necessity to evaluate the overall system and individual components based on stringent structural and functional requirements of an aircraft turbofan engine, that one of ordinary skill in the art would have been motivated to exchange Willis’s hinged flap variable area nozzle for an axially translating sleeve such as Duesler simply because it might be “beneficial to engine performance.” Pet. Reply 9 (citing Ex. 1006, 1:53–55). Apart from the alleged potential to overcome “airflow leakage” and “maneuverability” which are not mentioned as any of the express parameters, goals or system requirements in Willis, neither GE nor Dr. Abhari explain sufficiently how an axially translating sleeve would accommodate the very specific requirements and goals mandated for Willis’s engine such as those shown above in Table 1. We are persuaded based on our review of Willis and the record of this proceeding that Willis’s variable pitch fan and pivoting flap variable area nozzle are together implemented in turbofan aircraft engine in a manner which provides for solving the unique problems of short-haul aircraft systems as described in Willis. Based on our understanding of the principles of operation of Willis’s engine including the necessity for substantial increased reverse-thrust and reduced noise, we find that Duesler’s translating sleeve would alter fundamentally the design of Willis’s engine for short-haul aircraft. Under our rules, expert testimony that does not disclose the underlying facts or data on which an opinion is based is entitled to little or no weight. See 37 C.F.R. § 42.65(a); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,763; Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (nothing in the Federal Rules of Evidence or Federal Circuit jurisprudence requires the fact finder to credit unsupported assertions of an expert witness). We are not inclined to credit such unsubstantiated testimony. In an obviousness analysis, a reason must be given as to why a person of ordinary skill would have been motivated to modify a reference to achieve the patented invention. See Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 (Fed. Cir. 2008). Furthermore, an obviousness determination requires not only a reason to modify a prior art reference, but also that a skilled artisan in doing so would have perceived a reasonable expectation of success in making the invention. See Medichem, S.A., v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). Although GE contends that Dr. Abhari provided sufficient reason to combine, we disagree. See Pet.” slip op. at 28

  Patent outcomesUS 8,511,605 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,511,605
• Johns Manville Corporation / Johns Manville, Inc. v. Knauf Insulation, Inc. And Knauf Insulation SPRLNo claims unpatentable
  PTAB · May 8, 2017 · IPR2016-00130 · APJ Scott A Daniels · IPR · Final written decision

  The sole claim was not shown unpatentable under the instituted § 103 and § 102 grounds because the brochures did not create the same visual impression or anticipate the claimed design.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDenied

    “The plain language of section 315(e)(1) states that the estoppel applies to grounds a petitioner “reasonably could have raised.” (Emphasis added). The statute is grammatically clear in that the verb phrase or predicate, “reasonably could have raised,” is logically tied to its subject, “petitioner.” The word “reasonably” is not a mandatory word such as, “must,” or “shall.” The word “reasonably” is a qualifier that refers to the discretion applied by a qualified searcher in conducting an adequate search. This is consistent with the legislative history of section 315: The present bill also softens the could-have-raised estoppel that is applied by inter partes review against subsequent civil litigation by adding the modifier ‘reasonably.’ It is possible that courts would have read this limitation into current law’s estoppel. Current law, however, is also amenable to the interpretation that litigants are estopped from raising any issue that it would have been physically possible to raise in the inter partes reexamination, even if only a scorched-earth search around the world would have uncovered the prior art in question. Adding the modifier ‘reasonably’ ensures that could-have-raised estoppel extends only to that prior art which a skilled searcher conducting a diligent search reasonably could have been expected to discover. 157 Cong. Rec. S1360-94 (daily ed. Mar. 8, 2011) at 1375 (stmt. of Sen. Kyl). A reasonable reading of section 315(e)(1) does not mandate estoppel of all prior art in the possession of a petitioner, or prior art which petitioner, e.g. via its employees, may have possessed or known about at some point in time. To the contrary, the prior art estopped is that which “a skilled searcher conducting a diligent search reasonably could have been expected to discover.” Id. Congress easily could have broadened the estoppel provision to extend to “any ground that the petitioner raised or [] could have raised during that inter partes review,” but it did not. See id.” slip op. at 9

  • ExcludeMotion to exclude, deniedDenied

    “We determine that the documents are sufficiently authenticated, first, because the marketing, company contact and product information expressly set out in the brochures, along with the witnesses’ corroborating statements, show sufficiently that Exhibits 1004 and 1005 are what they appear to be, that is, advertising brochures that were printed and produced for dissemination to Johns Manville’s customers and sales personnel for unrestricted distribution to the public. Second, we determine that the dates on the brochures are not merely “archival” dates in Mr. Mota’s files as Knauf contends. See Mot. to Exclude, 4 (citing Apple Inc. v. DSS Technology Management, Inc., IPR2015-00369, slip op. at 6 (PTAB August 12, 2015) (Paper 14)). Mr. Mota and Mr. Graves both explain that it was standard practice at Johns Manville to print these dates on the brochures to indicate a first printing of the brochure. Ex. 2019, 20:23–21:24; Ex. 2020, 39:4–40:2. This testimony is corroborated, at least circumstantially, by the documents themselves where, for example, Exhibit 1005 states “10/00 (Replaces 12/97),” where 12/97 is the date printed on Exhibit 1004 and Exhibit 1005. We agree with Knauf that hearsay is not admissible under Fed. R. Evid. 802. Mot. to Exclude, 2. However, based on the testimony of Mr. Mota and Mr. Graves, we find that the dates printed on the brochures were a common business practice at James Manville. See Ex. 2019, 20:23–21:24; Ex. 2020, 39:4–40:2. These dates, along with the testimony of Mr. Mota and Mr. Graves, are probative of the authenticity of the documents themselves and their existence and purpose at the relevant time period. Knauf has provided no persuasive evidence that either the December 1997 date or the October 2000 dates as printed on the brochures are untrustworthy, or that either Mr. Mota’s or Mr. Graves’s testimony are inconsistent with this assertion. Also, we do not consider Mr. Mota or Mr. Graves’s declarations to be hearsay, as they are not out-of-court statements. In an inter partes review, direct testimony is typically provided via affidavit, with cross-examination taken via deposition. 37 C.F.R. § 42.53(a) and see Ex. 2019, 20:23–21:24; Ex. 2020, 39:4–40:2, 44:15–20. Thus, we determine on the evidence in this proceeding that Exhibits 1004 and 1005 are properly authenticated and not inadmissible hearsay because they have been shown to be commercial product advertising publications under Fed. R. Evid. 803(17) and include customary date information that, based on the sworn testimony of Mr. Graves and Mr. Mota, was made in the regular course of business and is thus subject to the business records exception under Fed. R. Evid. 803(6).” slip op. at 18

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “2010, 4). For example, considering the claimed design, we observe a random swirl pattern evident in both the color and black and white images of the claimed design shown above. We find the phrase “variations in a swirl pattern” helpful to objectively describe what we observe as the relative arrangement between the “distinct hues” shown in the photograph. Moreover, both parties have advanced this term in their proposed claim constructions. Compare Pet. 17 with PO Resp. 28. Observing the design as a whole, “swirl pattern” is somewhat less than specific. We agree to an extent with Knauf’s Declarant, Professor Rake, that “swirl pattern” can aptly describe a variety of patterns. Ex. 2012 ¶ 28. Thus, to facilitate a more expressive elocution of this element, we further described the contrast imparted by the “swirl pattern” consistent with the prosecution history of the ’670 patent as having a “cloud-like appearance.” Ex. 1002, 33. Both parties have also included this term in their proposed constructions. Compare Pet. 16 with PO Resp. 28.” slip op. at 28

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “manager who has a technical or engineering background and is familiar with the insulation manufacturing process, but who does not have any specialized training in color, is a designer of ordinary skill. PO Resp. 7–10. This definition has some appeal, mainly because the claimed article of manufacture here is insulation, and it does not appear, based on the testimony of witnesses from both parties, that in the insulation manufacturing process any particular expertise in color of the insulation was generally necessary. Compare Ex. 2004, 3:15–5:7 with Ex. 2008 ¶¶ 14–16. Color, however, is an issue here in this case that involves colored insulation material, specifically because Knauf conceded during prosecution that “color is an integral part of the claimed invention.” Ex. 1002, 13. We agree that a product manager can be “a designer of ordinary skill in the art” as applied to designs because a product manager, in charge of manufacturing insulation, is knowledgeable and sufficiently trained to fabricate such products. PO Resp. 7. That a product manager without certain expertise, such as in color, may be a “designer of ordinary skill” does not explain why such a definition must necessarily exclude another person, with a skill set in color, as a designer of ordinary skill. We find this to be particularly reasonable where an unfamiliar aspect of insulation design, such as color, is a concern. Indeed, James Worden, Knauf’s declarant, confirms that a Product Manager who did not have certain experience, for example with color, would understand that “a color pigment specialist may provide an understanding of coloring various substances.” Ex. 2008 ¶¶ 15–16. Thus, while Dr. Bide’s testimony may not be particularly relevant to all aspects of insulation design, here, where color is an integral part of the design, it is reasonable to include aspects of his particular expertise within the purview of an ordinary designer. See In re Nalbandian, 661 F.2d 1214, 1216 (C.C.P.A. 1981) (“The ‘ordinary designer’ means one who brings certain background and training to the problems of developing designs in a particular field.”) We determine that the designer of ordinary skill in the art for insulation material therefore may be a product manager in the insulation manufacturing industry who has a technical (e.g. engineering) background and, on issues relating to color, may also be a person such as a pigment specialist and/or binder chemist having background and training pertaining to color in development of the insulation design.” slip op. at 40

  Patent outcomesUS D631,670 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
• Johns Manville Corporation / Johns Manville, Inc. v. Knauf Insulation, Inc. And Knauf Insulation SPRLNo claims unpatentable
  PTAB · Jan 11, 2017 · IPR2015-01453 · APJ Scott A Daniels · IPR · Final written decision

  The sole claim was not shown unpatentable: OC PROPINK did not anticipate, and the asserted obviousness combinations did not establish the claimed design’s overall visual appearance.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedMixed

    “Based on this evidence, we determine that the testimony of at least Mr. Fay and Mr. Worden along with the characteristics and circumstances of the document itself are evidence sufficient to establish the authenticity of Exhibit 1003 – OC PROPINK, as a prior art reference. Knauf’s assertion in its Motion to Exclude, that “Mr. Worden had no personal knowledge of Exhibit 1003,” (Paper 40, 6) is also not persuasive because, as discussed above, Mr. Worden found the OC PROPINK promotional material entirely consistent, in his experience, with Owens Corning’s advertising and product promotion practices. Ex. 1024, 31:4–11. When asked if Owens Corning produced product literature such as OC PROPINK for products sold to the public, Mr. Worden replied: we had literature for everything, yes, multiple pieces that some targeted to certain audiences to make sure we were providing them with appropriate features and benefits that would be important to them, whether they were a contractor or homeowner. Id. at 33:8–13. Mr. Worden’s cross-examination testimony, as it is directed to his experience and knowledge as a marketing communication manager for Owens Corning, is neither hearsay, because it is not an out of court statement. Neither is Mr. Worden’s testimony inadmissible hearsay under at least Fed. R. Evid. 803(5)–(6) as it relates to evidence of regularly conducted business matters and promotional publications under Fed. R. Evid. 803(17), with which he was generally familiar in the course of his marketing and communications duties for Owens Corning. We are persuaded by the evidence discussed above that Johns Manville has shown by a preponderance of the evidence that OC PROPINK promotional material would have been publically available in at least 2005 and that Mr. Fay, as part of his investigative research into the products promoted in this document, downloaded OC PROPINK on March 28, 2005. Accordingly, we determine that OC PROPINK qualifies as a publically disseminated printed publication and is prior art to the ’670 patent. Knauf’s Motion to Exclude Exhibits 1003, 1017, 1020, and 1024 is DENIED.” slip op. at 10

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner

    “Based on this evidence, we determine that the testimony of at least Mr. Fay and Mr. Worden along with the characteristics and circumstances of the document itself are evidence sufficient to establish the authenticity of Exhibit 1003 – OC PROPINK, as a prior art reference. Knauf’s assertion in its Motion to Exclude, that “Mr. Worden had no personal knowledge of Exhibit 1003,” (Paper 40, 6) is also not persuasive because, as discussed above, Mr. Worden found the OC PROPINK promotional material entirely consistent, in his experience, with Owens Corning’s advertising and product promotion practices. Ex. 1024, 31:4–11. When asked if Owens Corning produced product literature such as OC PROPINK for products sold to the public, Mr. Worden replied: we had literature for everything, yes, multiple pieces that some targeted to certain audiences to make sure we were providing them with appropriate features and benefits that would be important to them, whether they were a contractor or homeowner. Id. at 33:8–13. Mr. Worden’s cross-examination testimony, as it is directed to his experience and knowledge as a marketing communication manager for Owens Corning, is neither hearsay, because it is not an out of court statement. Neither is Mr. Worden’s testimony inadmissible hearsay under at least Fed. R. Evid. 803(5)–(6) as it relates to evidence of regularly conducted business matters and promotional publications under Fed. R. Evid. 803(17), with which he was generally familiar in the course of his marketing and communications duties for Owens Corning. We are persuaded by the evidence discussed above that Johns Manville has shown by a preponderance of the evidence that OC PROPINK promotional material would have been publically available in at least 2005 and that Mr. Fay, as part of his investigative research into the products promoted in this document, downloaded OC PROPINK on March 28, 2005. Accordingly, we determine that OC PROPINK qualifies as a publically disseminated printed publication and is prior art to the ’670 patent. Knauf’s Motion to Exclude Exhibits 1003, 1017, 1020, and 1024 is DENIED.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “a case, as to whether or not it is appropriate to provide a verbal construction of the claimed design. See Egyptian Goddess 543 F.3d at 679 (stating that the Board is “not obligated to issue a detailed verbal description of the design if it does not regard verbal elaboration as necessary or helpful.”). It may be preferable not to provide a detailed claim construction in certain cases. However, observing the design in this proceeding as a whole, a claim construction such as “insulation material as shown in the sole figure of the ’670 patent,” would not reasonably provide a substantive factual or evidentiary basis for comparison relative to the prior art. Here, because the single color photograph depicting “insulation material” is, on its face, visually amorphous, lacking clear structure, form, and environment in which to give context to the design, we consider a verbal claim construction helpful to compare the claimed design to the prior art. See Egyptian Goddess, 543 F.3d at 680 (“While it may be unwise to attempt a full description of the claimed design, a court may find it helpful to point out . . . various features of the claimed design as they relate to the accused design and the prior art.”); see also High Point Design, 730 F.3d at 1314 (holding that a district court erred by failing to translate the design into a verbal description for purposes of a non-obviousness analysis). For example, there is a random swirl pattern evident in both the color and black and white images of the claimed design shown above. We find the term “swirl pattern” helpful to objectively describe what we observe as the relative arrangement between the “distinct hues” shown in the photograph. Moreover, both parties have advanced this term in their proposed claim constructions. Compare Pet. 16 with PO Resp. 28. Observing the design as a whole, “swirl pattern” is somewhat less than specific. We agree to an extent, with Knauf’s Declarant, Professor Rake, that “swirl pattern” can aptly describe a variety of patterns. Ex. 2012 ¶ 28. Thus, to facilitate a more expressive elocution of this element, we further described the contrast imparted by the “swirl pattern” consistently with the prosecution history of the ’670 patent as having a “cloud-like appearance.” Ex. 1002, 33. Both parties have also included this term in their proposed constructions. Compare Pet. 16, with PO Resp. 28. We further construed the claimed insulation material to include “a ‘waffle pattern’ as shown and described by the sole figure.” Inst. Dec. 8. We noted in our Institution Decision that in “observing the overall appearance of the design, the ‘waffle pattern’ is visually apparent, although not terribly distinct, in the color photograph.” Id. Neither party substantively disputes our interpretation of this element of the claim. Compare PO Reply 13, with Pet. Resp. 28.” slip op. at 17

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “A designer of ordinary skill in the art of insulation materials is generally someone “who designs articles of the type involved.” See High Point Design, 730 F.3d at 1313 (quoting Durling, 101 F.3d at 103). Knauf proposes the more persuasive definition for an ordinary designer. See PO Resp. 7–9. For one thing, the claimed design is for “insulation material,” not color per se. See Ex. 1001. Furthermore, Knauf’s definition is supported not only by its own witness James Worden, but also Johns Manville’s witnesses. Exs. 2008, ¶¶ 13–16; 2004, 3:24–6:10; 2007, 12:23–13:17. For example, Mark Granger, an employee of Johns Manville, is a mechanical engineer who has been involved in the design of insulation materials for almost 40 years. Ex. 2004 3:24–4:21. Mr. Granger testified during his deposition that an “[e]ngineering background is common,” and that he could not recall ever working with someone with a degree in color science. Id. at 4:22–6:10. However, we do not discount Mr. Worden’s testimony that an ordinary designer of insulation materials may consult “a pigment specialist and/or binder chemist” regarding issues of color. Ex. 2008 ¶ 17. The designer of ordinary skill in the art for insulation material is therefore a product manager in the insulation manufacturing industry who has a technical (e.g. engineering) background and who, on issues relating to color, may consult with a person such as a pigment specialist and/or binder chemist having background and training pertaining to color.” slip op. at 28

  Patent outcomesUS D631,670 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
• Praxair Distribution, Inc. v. Ino Therapeutics, LLCNo claims unpatentable
  PTAB · Sep 15, 2016 · IPR2015-00891 · APJ Scott A Daniels · IPR · Final written decision

  Praxair failed to prove claims 1–16 unpatentable under the three §103 grounds because it did not establish a sufficient reason to combine the prior art.

  RulingsFinal written decision

  • BurdenFwd all claims patentableNot shown unpatentable

    “sensed in-line gas concentration being used to perform verification of gas supply and gas delivery to a subject or patient into a device receiving gas concentration information from Peters’s handle and memory on the gas supply cylinder in order to verify and control gas delivery to a patient smacks of hindsight reasoning. After considering the evidence and arguments of both parties, we conclude that Praxair has failed to carry its burden of demonstrating, by a preponderance of the evidence, that independent claim 1 is unpatentable. Because Praxair’s obviousness analysis for dependent apparatus claims 2–11, as well as the dependent method claims 12–16, asserted in each of the grounds in this proceeding relies on the deficient asserted combination including Bathe and Peters, we similarly are not persuaded that Praxair has sustained its burden of demonstrating, by a preponderance of the evidence that claims 2–16 are unpatentable.” slip op. at 27

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

    “argument and testimony that Peters’s valve could work on Bathe’s cylinder does not explain why or how a person of skill in the art would combine Bathe and Peters, only that they could. PO Resp. 43–44. That Bathe could be modified by simply placing Peters’s valve on the cylinder to control gas flow from the cylinder, does not, alone, satisfy the requirements for combining the prior art. See InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014) (Experts “testimony primarily consisted of conclusory references to her belief that one of ordinary skill in the art could combine these references, not that they would have been motivated to do so.”). Petitioner’s challenge lacks an adequate motivation, not only to incorporate the smart valve of Peters into Bathe, but also to: (1) repurpose the incorporated valve by using (a) its “memory to store gas data comprising one or more of gas identification, gas expiration date and gas concentration” and (b) its processor and transmitter “to send and receive wireless optical line-of-sight signals to communicate the gas data to the control module that controls gas delivery to a subject” and (2) modify the Bathe system, such that its CPU would receive the wirelessly transmitted gas concentration data, even though the CPU already receives (and uses) flow and operator input data to provide a desired NO concentration. See Ex. 1005, 6:5–20.” slip op. at 21

  • Expert testimonyPetitioner expert discountedOther

    “read [Bathe] and been motivated to apply subsequent improvements to component parts of that system, such as the improved valve of [Peters].” Ex. 1002 at ¶ 112 (citing Ex. 1005, 6:11–15). Dr. Stone does not, however, point to any persuasive evidence or disclosure in Bathe, or provide sufficient explanation or reasoning to support this statement. See id. In particular, Dr. Stone does not describe what the “improvements” would have been or provide sufficient rationale as to why Bathe, which already has a connection between a supply cylinder and a gas delivery device and teaches verification of gas concentration from the cylinder by sensor 65 in the delivery system, would be improved by Peters’s manually actuated valve handle and included memory to meet the limitations of the independent claims. See Ex. 1005, 6:11–15. We find Dr. Stone’s testimony deficient as to showing any suggestion in Bathe or otherwise that would have motivated one of skill in the art to add Peters’s valve and memory to Bathe. We are also not persuaded that a person of skill in the art would have” slip op. at 23

  • ExcludeMotion to exclude, deniedDenied

    “D. INO’s Motion to Exclude Patent Owner seeks to exclude the testimony of Dr. Robert Stone (Exs. 1002, 2020). Because we do not rely on Dr. Stone’s testimony in a manner adverse to INO, the motion to exclude is dismissed as moot.” slip op. at 28

  Patent outcomesUS 8,573,210 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,573,210

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.