• Westinghouse Air Brake Technologies Corporation v. Siemens Mobility, Inc.Rehearing denied
  PTAB · Jan 29, 2019 · IPR2017-00981 · APJ Timothy J Goodson · IPR · Rehearing

  The Board denied Siemens Mobility’s rehearing request, leaving claims 1, 6, 9, 10, 15, 18, and 19 unpatentable based on the grounds in the Final Decision.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. LEGAL STANDARD In a request for rehearing, “[t]he burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). Further, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successDecided for patent owner

    “he did not analyze whether a skilled artisan would have combined disparate systems described in RSAC. Req. Reh’g 3–6. According to Patent Owner, that Petitioner did not present testimony from Dr. Pullen regarding motivation to combine different teachings within RSAC means that Petitioner’s obviousness case is deficient. Id. at 4–5. We disagree that expert testimony on motivation to combine is indispensable to support a determination of obviousness. The Federal Circuit has explained that “expert testimony is not required when the references and the invention are easily understandable.” Wyers v. Master Lock Co., 616 F.3d 1231, 1242 (Fed. Cir. 2010); see also Belden v. Berk-Tek LLC, 805 F.3d 1064, 1079 (Fed. Cir. 2015) (“No rule requires a Petition to be accompanied by any declaration. . . .”). Moreover, we pointed out in our Decision that “combining RSAC’s descriptions of different systems is not essential to Petitioner’s challenge” because RSAC’s descriptions of the PTS system are sufficient to teach each limitation of claim 1. Dec. 30. Recent Federal Circuit precedent indicates that a motivation to combine is unnecessary when a single reference teaches each element of a challenged claim. See Realtime Data, LLC v. Iancu, __ F.3d __, 2019 WL 149835, at *4 (Fed. Cir. 2019).” slip op. at 3

  § 103 obviousness
  Patents in suitUS 7,092,801
• Abs Global, Inc. v. Cytonome/St, LLCRehearing denied
  PTAB · Dec 14, 2018 · IPR2017-02163 · APJ Timothy J Goodson · IPR · Rehearing

  The Board denied ABS Global’s rehearing request, leaving in place its denial of institution because the Petition did not show that Weigl teaches the claimed focusing regions.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. LEGAL STANDARD In a request for rehearing, “[t]he burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). Further, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached

    “our Decision Denying Institution (Paper 11, “Decision” or “Dec.”). In that Decision, we concluded that Petitioner did not show a reasonable likelihood of prevailing in showing that any of the challenged claims of U.S. Patent No. 7,311,476 B2 (“the ’476 patent”) are unpatentable on any of the asserted grounds. See Dec. 22–27. Petitioner requests rehearing, arguing that we misapprehended or overlooked disclosures in Weigl,1 which was the primary reference Petitioner relied on in the asserted grounds. See Req. Reh’g 1. For the reasons set forth below, Petitioner’s request for rehearing is denied.” slip op. at 2

  • BurdenDecided for patent owner

    “helpful context, but in analyzing whether a petitioner has shown that the cited reference teaches a particular limitation, we look primarily to the section of the petition presenting arguments regarding that limitation. This flows from “the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim,’” Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)), as well as the requirement that “the Board must base its decision on arguments that were advanced by a party, and to which the opposing party was given a chance to respond.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016). See also Sirona Dental Systems GmbH v. Institut Straumann AG, 892 F.3d 1349, 1356 (Fed. Cir. 2018) (“It would . . . not be proper for the Board to deviate from the grounds in the petition and raise its own obviousness theory. . . .”). Here, the Request does not point to, and we do not find, any discussion of a constant-depth configuration in Weigl, in the Petition’s arguments regarding the “primary focusing region” and “secondary focusing region” limitations. See Pet. 39–44. Instead, as noted above, the Petition’s annotated drawings illustrating its contentions regarding these limitations show channel depth increasing, and the center fluid maintaining its dimensions as it flows downstream. The Request also argues that, leaving aside the constant-depth configuration, even a channel with increased depth would still serve to accelerate and narrow the center fluid. Req. 7–10. But here again, Petitioner did not present any such argument in the portion of its Petition arguing the “primary focusing region” and “secondary focusing region” limitations. See Pet. 39–44. The Request points to the summary of Weigl in the “Background of the Technology” section of the Petition. Req. 7–10 (citing Pet. 10–11). As such, we are not persuaded that our Decision overlooked or misapprehended Petitioner’s arguments regarding the “primary focusing region” and “secondary focusing region” limitations.” slip op. at 3

  None
  Patents in suitUS 7,311,476
• Nautilus, Inc. v. Icon Health & Fitness Inc.Some claims unpatentable
  PTAB · Nov 28, 2018 · IPR2017-01363 · APJ Timothy J Goodson · IPR · Final written decision

  Claims 1–5 and 11–13 are unpatentable as obvious; claims 6–10 and 14–19 were not shown unpatentable because Six-Pak was not established as prior art.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “Petitioner’s evidence to be deficient. What we find lacking is evidence that persons interested in exercise equipment knew of the TuffStuff website or would have been able to locate it through reasonable diligence. Even assuming that the two archived webpages captured by the Wayback Machine show that Six-Pak was available for anyone to view or download from the TuffStuff website,9 “‘[p]ublic accessibility’ requires more than technical accessibility.” Acceleration Bay, LLC v. Activision Blizzard Inc., __ F.3d __, 2018 WL 5795976, at *5 (Fed. Cir. Nov. 6, 2018) (affirming Board’s determination that a reference uploaded to a university website in the prior art period was not a printed publication when it was not meaningfully indexed to allow an ordinarily skilled person to locate the reference using the website’s search function). Petitioner has presented no evidence, in the Butler affidavit or elsewhere in the record, that the TuffStuff website could have been located through a reasonably diligent internet search.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “2. Claims 2–5 Petitioner contends that claims 2–5 would have been obvious over Sleamaker in view of Hanoun. Pet. 26–31. Petitioner argues that a skilled artisan would have been motivated to combine Sleamaker with Hanoun as proposed in its challenges to these claims because by 2013, it was known that exercise machines should track user performance and the market demanded such features. Id. at 19 (citing Ex. 1007 ¶¶ 44–50, 117–118). Sleamaker discloses electronics to track user performance (see Ex. 1002, 5:46–55), but according to Petitioner, “because the direction of its invention was not focused on the details of such electronics, a POSITA would have looked to Hanoun for a complimentary and more comprehensive system to measure performance in a flywheel-based exercise system.” Pet. 19 (citing Ex. 1007 ¶¶ 117–118). We find that Petitioner’s stated reasoning for combining Sleamaker and Hanoun is supported by rational underpinnings.” slip op. at 25

  • Skill levelSkill level petitioner adoptedOther

    “In our Decision on Institution, we adopted Petitioner’s proposal that an ordinarily skilled artisan at the time of the invention of the ’047 patent “would have had at least a bachelor’s degree in mechanical engineering or biomechanics and two years’ experience designing exercise equipment, or alternatively, an equivalent level of education and experience in product development and engineering regarding commercial fitness products.” Dec. on Inst. 7 (quoting Pet. 7). The parties’ post-institution briefing does not present any argument relating to the definition of the level of ordinary skill in the art. We maintain the definition of the level of ordinary skill in the art set forth in our Decision on Institution for the reasons stated therein. See Dec. on Inst. 7.” slip op. at 9

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

    “II. CLAIM CONSTRUCTION Under the version of our rules applicable to this inter partes review,7 claim terms in an unexpired patent are given their broadest reasonable construction in light of the specification. 37 C.F.R. § 42.100(b) (2016); Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). In our Decision on Institution, we determined that resolution of the disputed issues at that stage did not require an express interpretation of any claim term. See Dec. on Inst. 6 (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). The parties’ post-institution briefing does not present any claim construction arguments or issues. We maintain our determination that no express claim construction is necessary to resolve the disputed issues.” slip op. at 8

  Patent outcomesUS 9,403,047 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 9,403,047
• Westinghouse Air Brake Technologies Corporation v. Siemens Mobility, Inc.No claims unpatentable
  PTAB · Oct 24, 2018 · IPR2017-01263 · APJ Timothy J Goodson · IPR · Final written decision

  Claims 1, 4–6, 14, 16, 17, 19, 28, 32, 35, 42–44, and 48 were not shown unpatentable under either remaining § 103 ground because the combinations did not teach a targeted request for status information.

  RulingsFinal written decision

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

    “B. “transmitting . . . to a configurable device” The phrase “transmitting . . . to a configurable device” appears in each of independent claims 1, 14, 28, and 44. In our Decision on Institution, we determined that this phrase does not require direct transmission. Dec. on Inst. 8. In arriving at that determination, we considered whether the prosecution history of the ’461 patent supports an understanding that the phrase requires direct transmission, but we concluded that it does not. Id. at 6–8. In the parties’ briefing after institution, Patent Owner agreed with the construction in our Decision on Institution, and Petitioner did not address the construction of this phrase. PO Resp. 14; Reply 2. We maintain the construction set forth in our Decision on Institution for the reasons stated therein.” slip op. at 7

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

    “claims 1, 14, 28, and 44, and in several dependent claims. In our Decision on Institution, we construed the term to mean “a request for status information.” Dec. on Inst. 8. After institution, Patent Owner urged, as it had before institution, that we should construe the term as “a targeted request for status information.” PO Resp. 14–19. Patent Owner pointed out that in the Parallel District Court Case, the court’s construction of this term requires that the request is targeted. Id. at 15 n.2 (citing Ex. 2008, 10–12); see also Power Integrations, Inc. v. Lee, 797 F.3d 1318, 3126 (Fed. Cir. 2015) (explaining that although the Board is not generally bound by a previous judicial interpretation of a disputed claim term, the Board should nevertheless assess whether it is consistent with the broadest reasonable construction of the term). In its Reply, Petitioner states that Patent Owner’s “proposed construction is acceptable.” Reply 2; see also Tr. 8:24–9:1 (Petitioner’s counsel confirming that the parties agree on the construction of this term as a targeted request for status information). We will adopt the parties’ agreed-upon construction, which is also consistent with the construction in the Parallel District Court Case. Thus, we interpret “interrogation message” to mean “a targeted request for status information.”” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Institution Decision, we adopted Petitioner’s proposal that an ordinarily skilled artisan at the time of the invention of the ’461 patent “would have had an undergraduate degree or the equivalent thereof and at least five (5) years of experience in train operations or train control systems” and “would have had knowledge of train control systems, train safety systems that include wayside systems, and train communication systems, and would have understood how to search available literature for relevant publications.” Dec. on Inst. 10 (quoting Pet. 7–8). Following institution, Patent Owner stated its agreement with this definition of the level of ordinary skill in the art. See PO Resp. 19. We maintain the definition of the level of ordinary skill in the art set forth in our Institution Decision for the reasons stated therein. See Dec. on Inst. 10–11.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable

    “agreed construction that “interrogation message” means “a targeted request for status information.” We agree with Patent Owner that Petitioner has not established that the cited combination teaches a train transmitting a targeted request for status information to a configurable device near the train. Petitioner primarily relies on Petit as disclosing this limitation. Specifically, Petitioner points out that in Petit, the “first message from the train is initiated when the train locomotive passes a beacon, which is preferably a beacon transponder interrogated by locomotive-carried equipment.” Pet. 33 (quoting Ex. 1008, 2:31–34). It is this first message that the train sends to the crossing after passing the beacon that Petitioner points to as the “interrogation message.” Id. Petitioner contends that “this initial message . . . discloses the claimed ‘interrogation message’ because it is a request for status information.” Id. (citing Ex. 1002 ¶ 53). The record does not support Petitioner’s contention that this initial message in Petit is a request for status information from the crossing. The cited portion of Mr. Ditmeyer’s declaration concerns whether the train communicates directly with the crossing, without intervening communication equipment; it does not address whether the message from the train to the crossing includes a request for status information from the crossing. Ex. 1002 ¶ 53. The Petition itself quotes Petit’s description that train’s message to the crossing “giv[es] loco I.D., speed, direction of approach and distance from crossing.” Pet. 33 (quoting Ex. 1008, Fig. 5B). None of those items constitute a request for status information from the crossing, and Petitioner does not point to any disclosure in Petit indicating that this message additionally includes a request for status information.” slip op. at 14

  Patent outcomesUS 6,996,461 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,996,461
• Caterpillar Inc. v. Ernie BrookinsAll claims unpatentable
  PTAB · Sep 11, 2018 · IPR2017-01020 · APJ Jill D Hill · IPR · Final written decision

  Claims 1–10 are unpatentable: claims 1, 2, 6, and 7 as anticipated by Keiser and all claims under the stated obviousness grounds.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “3. “Rotational Power Distribution and Control System” Patent Owner repeats the same unsuccessful argument made in its Patent Owner Preliminary Response concerning limiting the phrase “rotational power distribution and control system” to a “fluid controlled resistance brake” because of the restriction requirement during prosecution. PO Resp. 3, 7–11. Patent Owner specifically argues that “[t]he patent application was restricted by the examiner to that of a ‘fluid controlled resistance brake’ (a hydraulic clutch) that takes the place of a standard clutch or torque converter and does not change gear ratio.” PO Resp. 8. Petitioner counters that Patent Owner does not cite to any authority that supports its novel proposition that election of a species during prosecution necessarily limits the scope of the claims, and that Patent Owner fails to “address the Board’s prior determination in any manner.” Reply 4. We agree. In our Decision on Institution, we preliminarily declined to limit the scope of 1 Patent Owner notes a claim construction ruling by a District Court in another proceeding involving the ’290 patent, construing “gear set” to mean “a gear set with three rotational interfaces.” Prelim. Resp. 14; Ex. 2001 at 15. claims 1–10 narrowly to include only the hydraulic clutch embodiment of Figures 1–3, or a “fluid controlled resistance brake” as argued by the Patent Owner. See PO Resp. 3, 7–8. Dec. on Inst. 11–12. Based on further review of the record, including the prosecution history and details of the restriction and election, we decline to limit the phrase “rotational power distribution and control system” to a “fluid controlled resistance brake” for the reasons provided in the Decision on Institution.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner, relying on the testimony of its declarant, contends that “[a] person of ordinary skill in the art at the time of the invention (“POSITA”) of the ’290 patent would have a degree in mechanical engineering or equivalent, and 3–5 years’ experience in the research, development, or application of hydraulic systems.” Pet. 12 (citing Ex. 1002 ¶¶ 14–17). According to Petitioner, “[t]his level of skill is approximate and more experience would compensate for less formal education, and vice versa.” Id. (citing Ex. 1002 ¶¶ 14–17). Although Patent Owner disagreed with Petitioner’s proposed definition in its Patent Owner Preliminary Response,2 Patent Owner does not dispute this contention directly in its Patent Owner Response. See, generally, PO Resp. Based on the entire record, we agree with Petitioner’s assessment, and find that a POSITA “would have [had] a degree in mechanical engineering or equivalent, and 3–5 years’ experience in the research, development, or application of hydraulic systems, and that significant experience with, or an understanding of hydraulic systems, would compensate for a formal degree.” Pet. 12. We also note that the cited references reflect the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself can reflect the appropriate level of skill in the art”).” slip op. at 13

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Additionally, we credit the testimony of Petitioner’s expert, Monika Ivantysynova, that the casing 110 of Keiser’s variator pump 100 shown in its Figure 9 “is the claimed ‘cylinder block’ recited in claim 1 of the ’290 patent,” such that Keiser’s variator pump 100 – and thus its cylinder block 110 – is disclosed as coupled to the sun gear. Ex. 1002, p. 28. According to Ms. Ivantysynova, Keiser’s cylinder block 110 “is interconnecting to the sun gear via the variator pump 100 (a power transfer mechanism) that is disposed outside of the continuously variable connection, i.e., not through a planetary [or differential] gear set.” Id. at 28–29 (citing Ex. 1004, 37:1–4). Patent Owner’s argument regarding a gear ratio change is not convincing because it is not commensurate with the scope of the claim. That is, the language of claim 1 does not recite coupling without a gear ratio change, and Patent Owner has not provided evidence or explanation regarding why the recitation of claim 1 necessitates a lack of gear ratio change. Based on the entire record, Petitioner presents sufficient arguments and credible evidence to support a finding that Keiser discloses “a cylinder block of said hydrostatic pump being coupled to one of said gear set” as required by claim 1.” slip op. at 26

  • BurdenUnpatentable

    “While an anticipatory reference “must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures,” (see Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (quoting In re Arkley, 455 F.2d 586, 587 (CCPA 1972)), the portions of Keiser on which Petitioner relies are directly related to each other by Keiser’s teachings that the pump of Keiser’s Figure 9 is an exemplary embodiment of a variator pump 14 as disclosed in Keiser’s Figure 1. See Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1343 (Fed. Cir. 2016) (distinguishing NetMoneyIN when the reference in question explicitly contemplated the combination of the disclosed functionalities).” slip op. at 25

  Patent outcomesUS 7,824,290 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,824,290
• Carefusion Corporation v. Baxter International Inc.Rehearing denied
  PTAB · Jun 13, 2018 · IPR2016-01463 · APJ Timothy J Goodson · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving claims 1–3, 6, 7, and 16 unpatentable as obvious over Bollish.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. LEGAL STANDARD In a request for rehearing, “[t]he burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). Further, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2

  • Expert testimonyPetitioner expert discountedDecided for petitioner

    “highlighted in Patent Owner’s Request. We weighed the cross-examination testimony from Dr. Bollish with the other evidence and ultimately found that the Bollish reference teaches the limitations in question, notwithstanding Dr. Bollish’s testimony. See Dec. 21–23, 25–26. When parties present competing interpretations of a reference, it is the Board’s function to weigh those arguments and make a finding as to which is more plausible. Idemitsu Kosan Co., Ltd. v. SFC Co. Ltd., 870 F.3d 1376, 1381 (Fed. Cir. 2017).” slip op. at 3

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

    “[W]e generally accept Petitioner’s arguments regarding the proper construction of this phrase and conclude that the broadest reasonable interpretation of “programming the infusion pump with a medication algorithm” encompasses a clinician entering parameters into the pump for an infusion protocol to govern administration of medication to the patient. Id. at 16.” slip op. at 5

  Claim construction
  Patents in suitUS 6,231,560
• Carefusion Corporation v. Baxter International, Inc.All claims unpatentable
  PTAB · Jan 17, 2018 · IPR2016-01460 · APJ Amanda F Wieker · IPR · Final written decision

  Claims 1–4 are unpatentable as obvious over the combined teachings of Layman and Gargano.

  RulingsFinal written decision

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

    “In light of the full record developed during trial, we agree with Patent Owner that Petitioner’s construction is improperly limiting. PO Resp. 9–13; Dec. on Inst. 8. Challenged claim 1 does not specify how the circuit determines the remaining time of charge, other than to require it “respon[d] to the monitoring circuit.” Ex. 1001, 15:42–43. By contrast, claim 9 explicitly limits the determination by stating, “determining from the voltage and the current the remaining time of charge.” Id. at 16:32–33 (emphasis added). We will not, through claim construction, import limitations into claim 1 that are not recited. See, e.g., U.S. v. Telectronics, Inc., 857 F.2d 778, 783–784 (Fed. Cir. 1988) (“‘There is presumed to be a difference in meaning and scope when different words or phrases are used in separate claims. . . .’ ‘Where some claims are broad and others narrow, the narrow claim limitations cannot be read into the broad.’”) (citations omitted).” slip op. at 6

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “These limitations recite the term “means” and, as such, we presume they invoke 35 U.S.C. § 112 ¶ 6. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348–49 (Fed. Cir. 2015) (en banc in relevant part) (“‘[U]se of the word ‘means’ creates a presumption that § 112, ¶ 6 applies.’”). Accordingly, we agree with Petitioner that construction of these limitations is necessary in order to apply properly the asserted prior art to the relevant claim limitations. See Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299–1300 (Fed. Cir. 2009) (“It is firmly established in our precedent that a structural analysis is required when means-plus-function limitations are at issue; a functional analysis alone will not suffice.”). In their post-institution papers, neither party provides evidence or argument to support a different construction of these limitations. Accordingly, we discern no reason to address or alter our initial construction of these limitations for the purposes of this Final Written Decision.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner relies on the First Heim Declaration and contends that such a person would have had “an engineering degree and at least six years’ experience designing medical devices using electronics and electro-mechanical components (e.g., infusion pumps) powered by batteries.” PO Resp. 7–8 (citing Ex. 2001 ¶¶ 43–44). Primarily, the parties’ assessments of the skill level of a person of ordinary skill in the art differ in that Patent Owner contends that such a person would have had six years of experience designing medical devices, instead of two years of experience, and further contends that this experience would relate specifically to medical devices that are powered by batteries. Compare PO Resp. 7–8, with Pet. 10–11. Based on our review of the ’034 patent, the types of problems and solutions described in the ’034 patent and in the applied prior art, and the testimony of Dr. Xu and Mr. Heim, we determine that Petitioner’s assessment of the skill level of a person of ordinary skill in the art is most consistent with this evidence. Specifically, the ’034 patent and the asserted prior art relate to various different aspects of infusion pump technology, including processing, power management (by both external and internal battery sources), device display, and infusion pumping. See generally Ex. 1001; Ex. 1004; Ex. 1005. In light of these broad disclosures, we conclude that the appropriate level of skill in the art is not as narrow or specialized as Patent Owner proposes. We note that our conclusions herein would not differ under either party’s assessment.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “regarding claim 2, Petitioner has shown that Layman inherently discloses “means for sampling” voltage and current. The Petition’s contention that a single circuit cannot process two signals simultaneously is supported by the Xu Declaration. Dr. Xu states: [S]uch a person [of ordinary skill in the art] would have known and easily understood that a single analog-to-digital converter channel cannot sample two analog signals simultaneously. Rather, such a circuit samples the signals one at a time. As such, some sort of switch or addressing device would have been used to direct the circuit to sample the correct signal at the proper time. See Ex. 1003 ¶ 16. According to Dr. Xu, this would have been a “basic engineering and physics principle[]” that “would have been readily apparent to a person of ordinary skill and experience.” Id. We credit Dr. Xu’s testimony on this issue, especially in light of the lack of contrary evidence in the Patent Owner Response. In light of this evidence, we determine that Petitioner has shown by a preponderance of the evidence that Layman inherently discloses an analog-to-digital converter, as discussed regarding claim 2, and a switch to sample alternatively between voltage and current. Alternatively, we are persuaded by Petitioner’s contention that it would have been obvious to a person of ordinary skill in the art to utilize a switch to alternatively sample in this manner, to enable “the circuit to sample the correct signal at the proper time,” as explained by Dr. Xu. Ex. 1003 ¶ 16.” slip op. at 28

  Patent outcomesUS 5,764,034 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 5,764,034
• Smith & Nephew, Inc. / Arthrocare Corp. v. Arthrex, Inc.Rehearing denied
  PTAB · Dec 15, 2017 · IPR2016-00918 · APJ Barry L Grossman · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving claims 10 and 11 unpatentable as obvious because the cited commercial-success evidence had little probative weight.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “(d) Rehearing. . . . The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 2

  • Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia no nexusNot shown unpatentable

    “Moreover, even if we were now to consider Exhibit 2013 and Professor Gall’s Declaration testimony about Ex. 2013, at best this evidence would merely create a presumption of nexus. Req. Reh’g. 6 (“a nexus should be presumed”). Establishing a presumption of nexus, however, does not establish commercial success or patentability. In re Kao, 639 F.3d at 1067 (when secondary considerations are present, “they are not always dispositive”); see also Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir. 2007) (“Although secondary considerations must be taken into account, they do not necessarily control the obviousness conclusion.”). As discussed above, the evidence of commercial success based on the sales data presented in the declaration testimony of Mr. Holter (Ex. 2029) and Mr. Vellturo (Ex. 2025) is entitled to little probative weight. Even if we were to attempt to balance this commercial success evidence against the substantial prior art evidence that claims 10 and 11 would have been obvious, as discussed in our Final Written Decision, it would not change our conclusion that a preponderance of the evidence establishes that claims 10 and 11 would have been obvious. See Fin. Dec. 68, 75. We disagree with Patent Owner’s argument “that the evidence of record regarding commercial success sufficiently rebuts any showing of obviousness of claims 10 and 11.” Req. Reh’g. 6.” slip op. at 9

  § 103 obviousness
  Patents in suitUS 8,821,541
• International Business Machines Corp. v. Groupon, Inc.Institution denied
  PTAB · Dec 5, 2017 · IPR2017-01452 · APJ James A Tartal · IPR · Institution

  The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood of prevailing on either obviousness ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner

    “1 U.S. Patent No. 7,593,740 B2, issued September 22, 2009 (Ex. 1108, “Crowley”). 2 U.S. Patent App. Pub. No. 2003/0004802 A1, published January 2, 2003 (Ex. 1109, “Callegari”). 3 Patent Owner argues that we should exercise our discretion under 35 U.S.C. § 314(a) to deny the Petition. Although Patent Owner asserts that “Petitioner improperly challenges the same claims by filing two Petitions on the same day” that present substantially the same arguments, Patent Owner further asserts that Petitioner has taken “inconsistent positions across each of the Petitions” by equating the claim term “correlating” to “indexing” in one petition and “grouping” in another. Id. at 24–27. We have considered Patent Owner’s arguments and are not persuaded to exercise our discretion to deny institution under the circumstances presented in this case. See Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357 (PTAB Sept. 6, 2017) (Paper 19, 15–16) (precedential) (discussing factors considered in determining whether to exercise discretion to decline institution of review). Patent Owner also argues that we should decline institution under 35 U.S.C. § 325(d) because the asserted references are “cumulative of the references specifically referenced by the Examiner during prosecution.” Prelim. Resp. at 30. We have considered Patent Owner’s arguments and are not persuaded that the Examiner’s consideration of prior art alleged to be substantially similar to the references asserted by Petitioner warrants denial of the Petition in this case” slip op. at 9

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “1 U.S. Patent No. 7,593,740 B2, issued September 22, 2009 (Ex. 1108, “Crowley”). 2 U.S. Patent App. Pub. No. 2003/0004802 A1, published January 2, 2003 (Ex. 1109, “Callegari”). 3 Patent Owner argues that we should exercise our discretion under 35 U.S.C. § 314(a) to deny the Petition. Although Patent Owner asserts that “Petitioner improperly challenges the same claims by filing two Petitions on the same day” that present substantially the same arguments, Patent Owner further asserts that Petitioner has taken “inconsistent positions across each of the Petitions” by equating the claim term “correlating” to “indexing” in one petition and “grouping” in another. Id. at 24–27. We have considered Patent Owner’s arguments and are not persuaded to exercise our discretion to deny institution under the circumstances presented in this case. See Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357 (PTAB Sept. 6, 2017) (Paper 19, 15–16) (precedential) (discussing factors considered in determining whether to exercise discretion to decline institution of review). Patent Owner also argues that we should decline institution under 35 U.S.C. § 325(d) because the asserted references are “cumulative of the references specifically referenced by the Examiner during prosecution.” Prelim. Resp. at 30. We have considered Patent Owner’s arguments and are not persuaded that the Examiner’s consideration of prior art alleged to be substantially similar to the references asserted by Petitioner warrants denial of the Petition in this case” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingNo construction neededDecided for petitioner

    “Petitioner states that in district court proceedings Patent Owner contends the preamble language of various claims of the ’360 patent is not limiting, but also proposes constructions if it is limiting. Pet. 12–13. Petitioner, however, fails to state whether Petitioner contends the preambles are limiting. A petition must set forth “[h]ow the challenged claim is to be construed.” 37 C.F.R. § 42.104(b)(3). Merely stating Patent Owner’s contentions from a district court proceeding is not sufficient. In this case neither party has shown that any preamble language is limiting. Moreover, in the absence of any dispute over the meaning of any preamble terms, we determine no express construction is necessary for purposes of this decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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 10

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 7,856,360
• Colas Solutions Inc. v. Blacklidge Emulsions, Inc.No claims unpatentable
  PTAB · Nov 2, 2017 · IPR2016-01031 · APJ Mitchell G Weatherly · IPR · Final written decision

  Claims 1–12, 15–20, 23–28, and 31–33 were not shown unpatentable under § 103 because the cited combination did not establish the claimed softening point.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The Parties’ definitions differ in that under Patent Owner’s proposal, additional work experience can substitute for a science or engineering degree. Patent Owner supports that position by pointing to the backgrounds of Mr. O’Leary and the inventor, Mr. Blacklidge, neither of whom has a bachelor’s degree in engineering or science. PO Resp. 15–16; Ex. 1034, 12:15–13:3; Ex. 2027, App’x A; see also Ex. 2026 ¶¶ 22–23 (discussing the educational background of active workers in the field). Patent Owner also cites Dr. King’s deposition testimony agreeing that Mr. O’Leary was an example of someone who had attained the level of ordinary skill in the art through sufficient work experience without academic credentials beyond high school. Ex. 2025, 376:4–377:14. This evidence supports Patent Owner’s position that relevant work experience can substitute for a bachelor’s degree in science or engineering in this case. Accordingly, we find that a person of ordinary skill in the art at the time of the invention of the ’724 patent would have had a bachelor’s degree in chemistry, civil engineering, chemical engineering, material science, or a related field of science or engineering, plus five years of experience in the field of asphalt paving and/or asphalt emulsion technology. Alternatively, an ordinarily skilled artisan would have had ten years of experience in the field of asphalt paving and/or asphalt emulsion technology.” slip op. at 9

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Applying that standard for inherency, the evidence does not sufficiently support a finding that a cured tack coat formed from a base asphalt as described in Bardesi would necessarily have “a softening point greater than about 140 ° F. (60 ° C.),” as recited in claim 1. The parties agree that Dr. King’s calculations using the Pfeiffer equation were erroneous and that Dr. Little’s calculations correctly apply the Pfeiffer equation. See PO Resp. 29; Reply 17; Tr. 27:7–28:10, 80:9–10. Even assuming the correctness of the assumptions undergirding Dr. King’s analysis of the softening point limitation — which include the reliability of the Pfeiffer equation to calculate softening point, the range of PI values between -1 and +1 for the asphalts described in Bardesi, and the use of a base asphalt’s softening point as a measure of the softening point for a cured tack coat made from that asphalt — the now agreed-upon data that result from the Pfeiffer equation show that not all 10-pen and 20-pen asphalts have a softening point greater than 60°C. Ex. 2026 ¶¶ 91–93. Indeed, Petitioner and Dr. King seem to concede this point. Reply 18; Tr. 80:8–14; see also Ex. 1030 ¶ 29 (rebuttal declaration of Dr. King stating that “most 10-20 pen paving grade asphalts” would have a softening point in the claimed range).” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot reached

    “To the extent Petitioner’s arguments in the Reply and at the hearing that the claimed range of softening points is typical or expected are offered as an alternative theory of obviousness in lieu of inherency, those arguments were not adequately developed and presented in the Petition. “It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” Intelligent Bio- Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)). “Unlike district court litigation— where parties have greater freedom to revise and develop their arguments over time and in response to newly discovered material—the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute.” Id. The Federal Circuit has applied this rule to bar a petitioner from shifting its theory of obviousness after the patent owner pointed out the flaws of the obviousness case presented in the petition. See Wasica Finance GmbH v. Continental Automotive Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017) (“Rather than explaining how its original petition was correct, Continental’s subsequent arguments amount to an entirely new theory of prima facie obviousness absent from the petition. Shifting arguments in this fashion is foreclosed by statute, our precedent, and Board guidelines.”). Likewise, the Petition in this case relied on inherency for the softening point limitation, and Patent Owner successfully rebutted that theory in its Patent Owner Response. Following that rebuttal, Petitioner is not permitted to abandon inherency to pursue a different theory that it did not present in its Petition. Accordingly, we do not reach the issue of whether the claim is obvious under a different theory than Petitioner advanced in its Petition.” slip op. at 26

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

    “Applying that standard for inherency, the evidence does not sufficiently support a finding that a cured tack coat formed from a base asphalt as described in Bardesi would necessarily have “a softening point greater than about 140 ° F. (60 ° C.),” as recited in claim 1. The parties agree that Dr. King’s calculations using the Pfeiffer equation were erroneous and that Dr. Little’s calculations correctly apply the Pfeiffer equation. See PO Resp. 29; Reply 17; Tr. 27:7–28:10, 80:9–10. Even assuming the correctness of the assumptions undergirding Dr. King’s analysis of the softening point limitation — which include the reliability of the Pfeiffer equation to calculate softening point, the range of PI values between -1 and +1 for the asphalts described in Bardesi, and the use of a base asphalt’s softening point as a measure of the softening point for a cured tack coat made from that asphalt — the now agreed-upon data that result from the Pfeiffer equation show that not all 10-pen and 20-pen asphalts have a softening point greater than 60°C. Ex. 2026 ¶¶ 91–93. Indeed, Petitioner and Dr. King seem to concede this point. Reply 18; Tr. 80:8–14; see also Ex. 1030 ¶ 29 (rebuttal declaration of Dr. King stating that “most 10-20 pen paving grade asphalts” would have a softening point in the claimed range).” slip op. at 21

  Patent outcomesUS 7,503,724 not shown unpatentable
  § 103 obviousnesscites Graham
  Patents in suitUS 7,503,724

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.