• 3shape A/S / 3shape Inc. v. Align Technology, Inc.Some claims unpatentable
  PTAB · Jul 16, 2020 · IPR2019-00152 · APJ Neil T Powell · IPR · Final written decision

  Claims 15 and 20 are unpatentable as anticipated by Picard; claims 1–14 and 16–19 were not shown unpatentable on the asserted grounds.

  RulingsFinal written decision

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

    “In view of our analysis below, we need not construe expressly any claim language to resolve the parties’ patentability dispute. The Petition’s first challenge asserts obviousness of claims 1, 2, 7, 8, 9, and 14 over Picard and Ishihara. Pet. 18–39. As explained in greater detail below in Section III.B.3, this challenge rests on a contention that it would have been obvious to modify Picard to use telecentric optics like those taught in Ishihara. Id. at 32–38. With respect to the challenge of claims 1, 2, 7, 8, 9, and 14 over Picard and Ishihara, the Petition does not explain any theory of unpatentability that does not rely on the assertion that it would have been obvious to modify Picard with telecentric optics based on Ishihara. Id. at 18–39. Thus, the merits of this challenge inextricably depend on whether Petitioner has demonstrated adequately that it would have been obvious to modify Picard with telecentic optics based on Ishihara. For the reasons explained below in Section III.B.3, Petitioner has not done so. Therefore, Petitioner’s challenge of claims 1, 2, 7, 8, 9, and 14 over Picard and Ishihara fails for reasons unrelated to claim construction.” slip op. at 9

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

    “We agree that the law does not require Petitioner to show a person of ordinary skill in the art would have viewed the proposed modification as the most preferred or desirable approach. The law does, however, require Petitioner to show not only that a person of ordinary skill in the art could have combined the references in the proposed manner, but that a person of ordinary skill in the art would have had a reason to combine the references’ teachings in the proposed manner. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis added) (citation omitted) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”). Here, Petitioner does not do so.” slip op. at 25

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Thus, Picard expressly discloses that the embodiment discussed in connection with Figure 8 includes the components and features shown and discussed in connection with Figure 3, plus all of the components and features shown and discussed in connection with Figure 8. Accordingly, the Petition cites to Picard’s discussions of Figures 3 as providing details regarding certain components and features that Picard discloses are also included in the embodiment of Figure 8. Pet. 20–23, 26–30, 39–41. In view of Picard’s express teaching to combine the features of Figures 3 and 8 and explanation of how they should be combined (Ex. 1003, 24:9–17) and Petitioner’s reliance on these same features to show anticipation (Pet. 20–23, 26–30, 39–41), we find no merit in Patent Owner’s argument that Petitioner does not identify any motivation to combine Picard’s discussions of Figures 3 and 8.11 See Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1344 (Fed. Cir. 2016) (“[A] reference need not always include an express discussion of the actual combination to anticipate. . . . Instead, a reference may still anticipate if that reference teaches that the disclosed components or functionalities may be combined and one of skill in the art would be able to implement the combination.”) (citing Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F. 3d 1376, 1383 (Fed. Cir. 2015)). In sum, Petitioner demonstrates by a preponderance of the evidence that Picard anticipates claims 15 and 20.” slip op. at 32

  • Strike new argumentNew argument disregardedDecided for patent owner

    “have foreseen Patent Owner’s argument does not justify its insufficient explanation and lack of evidence in the Petition. As Patent Owner argues, its ITC brief, filed approximately a month before the Petition was filed, provided effective notice of Patent Owner’s position that there would have been issues using Gmitro’s fiber-optic bundle to carry the plurality of light beams used in Tiziani. Id. Moreover, even without such express notice, Petitioner should have recognized the requirement that its Petition must “identif[y], in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). The Petition was also required to include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing laws, rules, and precedent.” 37 C.F.R. § 42.22(a)(2). The Petition fails to meet these requirements with respect to its assertion that a person of ordinary skill in the art would have had a reasonable expectation of success in combining Gmitro’s fiber-optic bundle with Tiziani’s confocal imaging system and microlens array. It is “improper for a reply to present new evidence (including new expert testimony) that could have been presented in a prior filing.” Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 74– 75 (citing Genzyme Therapeutic Prods. Ltd. v. Biomarin Pharm. Inc., 825 F.3d 1360, 1365–69 (Fed. Cir. 2016)). Petitioner does not provide any persuasive reason that the evidence it presented with its Reply to bolster its assertion of a reasonable expectation of success could not have been provided with the Petition. Accordingly, we find that Petitioner exceeded the proper scope of a reply with its newly presented arguments on pages 24– 27 of the Reply and with the its new citations of portions of the ’901 Patent (Ex. 1001, 5:46–48, 5:52–58, 6:2–6, 7:62–8:13, Fig. 1A), Picard (Ex. 1003, 25–26), Gmitro’s title (Ex. 1005, title), Dr. Sergienko’s new testimony (Ex. 1037 ¶¶ 23–28), and Exhibits 1038 and 1039. For all of the foregoing reasons, Petitioner has not carried its burden of showing that claims 1, 2, 7–9, 14, 15, and 20 would have been obvious over Tiziani, Gmitro, and Ishihara.” slip op. at 47

  Patent outcomesUS 9,615,901 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 9,615,901
• Edwards Lifesciences Corporation v. Boston Scientific Scimed, Inc.Some claims unpatentable
  PTAB · Oct 31, 2018 · IPR2017-01281 · APJ James A Tartal · IPR · Final written decision

  Claims 5, 6, 8–12, 14, 16, and 17 are unpatentable: claim 5 is anticipated by Dlugos; the remaining claims are obvious over the specified combinations.

  RulingsFinal written decision

  • BurdenMixed

    “evidence discussed in the Petition, including the declaration of Mr. Trotta. For the reasons that follow, we determine that Petitioner has shown by a preponderance of the evidence that claim 5 is anticipated by Dlugos and would have been obvious over Dlugos and Eskaros; that claim 8 would have been obvious over Dlugos, Eskaros, and Hijlkema; that claims 6, 14, and 16 would have been obvious over Dlugos, Eskaros, and Forman; that claims 9, 10, and 12 would have been obvious over Dlugos, Eskaros, and Traxler; that claim 11 would have been obvious over Dlugos, Eskaros, Traxler, and Forman; and that claim 17 would have been obvious over Dlugos, Eskaros, Forman, and Becker.” slip op. at 24

  • Expert testimonyPetitioner expert discountedOther

    “shown that Dlugos necessarily teaches first and second cone regions of the balloon having at least one fold in the fully inflated state. Moreover, we find Mr. Trotta’s testimony in support of Petitioner’s contention insufficient. According to Mr. Trotta: When folds are welded down, as shown in the figure 3, it would necessarily result in folds remaining in the transition/cone regions of the balloon when the balloon is inflated, and even when fully inflated to the specifications on the label. Because the folds are captured within the welded region, even when the balloon is fully inflated, the pressure will distribute such that there is more pressure in the working region and less pressure at the transition regions. Thus, there is insufficient pressure in the transition cone regions for the folds to be completely removed. Ex. 1005 ¶ 119. Mr. Trotta cites no support for his opinions and offers no plausible explanation for why “pressure will distribute such that there is more pressure in the working region and less pressure at the transition regions,” rather than equal pressure throughout the interior space of a balloon. Nor are we persuaded that statements by the Examiner during prosecution identified by Petitioner, which Patent Owner contends were later abandoned by the Examiner, are sufficient to establish the inherency of the claimed feature. See Pet. 39–40; Prelim. Resp. 14–15. Petitioner has not shown by a preponderance of the evidence that Dlugos teaches “first and second cone regions of the balloon having at least one fold in the fully inflated state” because Petitioner has not shown that Dlugos necessarily teaches any cone region having at least one fold in the fully inflated state, much less both a first and a second cone region, in the absence of a persuasive showing that Dlugos teaches welding both ends of the balloon to the shaft.” slip op. at 40

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of the claimed invention would have had either of the following qualifications: (1) “an undergraduate degree in mechanical manufacturing or material science engineering, as well as at least five years of experience in the industry working with catheters and balloons and the manufacturing of those devices; or without an undergraduate degree,” or (2) “ten years of working experience designing, manufacturing and/or overseeing the processes for designing and/or manufacturing the tools and/or the devices.” Pet. 14. Mr. Trotta supports Petitioner’s contention with regard to the level of ordinary skill in the art. Ex. 1005 ¶ 57. Patent Owner does not contest Petitioner’s asserted level of ordinary skill in the art. See Prelim. Resp. 6 n.3. Based on the evidence provided, including the prior art of record, we agree with Petitioner’s proposed level of ordinary skill and also find that the prior art of record further reflects the level of ordinary skill in the art. See also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art of record may reflect the level of ordinary skill in the art).” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “For the following reasons, we find insufficiently supported and unreasonably broad Petitioner’s contention that “fold” broadly includes all “lobes,” “wraps,” “wrappings,” and “protrusions,” even if those terms appear in some context in patent applications incorporated by reference to the ’767 patent. Petitioner neither identifies precisely where that context can be found in the record of this proceeding nor offers any explanation of that context to demonstrate by a preponderance of the evidence that the term, reasonably construed in light of the Specification of the ’767 patent, defines “fold” as including all “lobes,” “wraps,” “wrappings,” and “protrusions.” The mere incorporation by reference of other applications into the Specification of the ’767, absent further persuasive explanation, does not sufficiently support the proposition that the term “fold” broadly encompasses, for example, any “protrusion.” Moreover, Petitioner provides no explanation for why “examples of methods of balloon folding” that “reference” the terms “lobes,” “wraps,” “wrappings,” and “protrusions” demonstrate that the meaning of “fold” encompasses those terms. Finally, the ’767 patent expressly states that the term “fold”’ includes “pleats, wings, and any similar structure.” Ex. 1001, 3:62–63. Petitioner, however, makes no persuasive showing supported by more than conclusory assertions that all “lobes,” “wraps,” “wrappings,” and “protrusions” constitute “similar structure” to folds, pleats, or wings. Accordingly, we find the term “fold” in the ’767 patent encompasses “pleats, wings, and any similar structure.” Thus, “fold” also encompasses lobes, wraps, wrappings, or protrusions (or any other feature) only to the extent such feature constitutes “similar structure” to folds, pleats, or wings.” slip op. at 14

  Patent outcomesUS 7,828,767 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,828,767
• Edwards Lifesciences Corporation v. Boston Scientific Scimed, Inc.Some claims unpatentable
  PTAB · Jun 28, 2018 · IPR2017-00444 · APJ James A Tartal · IPR · Final written decision

  Claims 10, 11, 14, 15, 17–19, 23, 25–28, 31, 33–35, 37, 39, and 40 are unpatentable as obvious; claims 1, 2, 6, 8, and 9 were not shown obvious.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “seeks. See 37 C.F.R. 42.20(c) (“The moving party has the burden of proof to establish that it is entitled to the requested relief.”). First, a motion to exclude deals with the admissibility of evidence under the Federal Rules of Evidence. See 37 C.F.R. §§ 42.62 (applying the Federal Rules of Evidence to inter partes reviews), 42.64; Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,758 (August 14, 2012) (“Admissibility of evidence is generally governed by the Federal Rules of Evidence.”). As stated in the Office Patent Trial Practice Guide, the parties may submit motions to exclude regarding evidence “believed to be inadmissible.” Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,758. Further, a motion to exclude “must explain why the evidence is not admissible (e.g., relevance or hearsay).” Id. at 48,767. Patent Owner has made no showing that the Supplemental Declaration or Petitioner’s Reply are inadmissible. We further agree with prior panels of the Board, which have determined under similar circumstances that a “motion to exclude evidence filed for the purpose of striking or excluding an opponent’s brief and/or evidence that a party believes goes beyond what is permitted under 37 CFR § 42.23 is improper.” Palo Alto Networks, Inc. v. Finjan Inc., Case IPR2015-01979, Paper 62, 66 (PTAB Mar. 15, 2017) (stating that an “allegation that evidence does not comply with 37 CFR § 42.23 is not a sufficient reason under the Federal Rules of Evidence for making an objection and requesting exclusion of such evidence”); see also Blackberry Corp. v. Zipit Wireless, Inc., Case IPR2014-01508, Paper 49, 40 (PTAB Mar. 29, 2016) (“a motion to exclude is not a proper vehicle for a party to raise the issue of arguments exceeding the permissible scope of a reply”).” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Second, if “linear” motion were required, Petitioner has persuasively explained that the dies taught in Yasumi move in the same manner as the dies claimed in the ’560 patent. Ex. 1105 ¶¶ 95–104, 127–129, 136; Ex. 1127 ¶¶ 50–53. We credit the testimony of Mr. Sheehan over Dr. Solar on this point because we find Mr. Sheehan’s testimony to be most consistent with the teachings of Yasumi. Indeed, Patent Owner does not dispute that Yasumi teaches “a rotatable actuation device coupled to the dies,” as claimed, or that rotation of the actuation device causes the aperture to increase or decrease in size. See generally PO Resp. Patent Owner offers no plausible theory in rebuttal, much less any evidence, to suggest that the aperture of Yasumi formed by the inward facing straight sides of the dies increases and decreases with the rotation of the actuation device, but that the faces do not “move inward and reduce the size of the aperture or outward so as to increase the size of the aperture,” as claimed. To the extent Patent Owner is merely arguing that Petitioner has not made the necessary showing, we find such argument in this case unpersuasive as Petitioner has shown by a preponderance of the evidence that Yasumi teaches every limitation of claim 10. See, e.g., Pet. 66 (citing Ex. 1103, 8:42–54).” slip op. at 34

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

    “We agree with Petitioner that the preamble recitation of “[a] stent crimper comprising” is not limiting as to any of the challenged claims. The preamble language merely provides a name to the claimed invention that describes a use for the invention, whereas the body of each claim describes a structurally complete invention. See Catalina Mktg., 289 F.3d at 809. Because “the preamble offers no distinct definition of any of the claimed invention’s limitations, but rather merely states . . . the purpose or intended use of the invention, . . . the preamble is of no significance to claim construction.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999), citing Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997); Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989); Kropa v. Robie, 187 F.2d 150, 152 (CCPA 1951). Moreover, contrary to Patent Owner’s arguments, the ’560 patent makes clear that the claimed invention is not intended to be limited to a stent crimper. As Petitioner notes, “the specification provides broad disclosure of multiple alternative applications for the invention,” including manipulating other medical devices and as a balloon mold. Pet. Reply. 7–8 (citing Ex. 1101, 2:48–55, 3:14–22, 3:36–37, 8:65–9:62, Figs. 12, 13); Ex. 1101, 2:48–55, 3:16–21, 3:36–37, 8:65–9:62, Figs. 12, 13.” slip op. at 16

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

    “To the extent Petitioner’s proposal divorces the recited “engaged” from the “operation” of the apparatus, we agree the meaning would be too broad. However, we discern little substantive difference in the arguments made by both parties with regard to what “operatively engaged” encompasses, even if they dispute the full scope of the meaning of the term. There is no reasonable dispute that an element is “operatively engaged” if it is engaged, directly or indirectly, in the operation of the device. See, e.g., Tr. 24:13–25:12; see also Ex. 1126, 60:18–25 (Dr. Solar equating operative engagement to “whether it’s fixed or connected in some manner that explains how that part works”). No further express construction is necessary.” slip op. at 19

  Patent outcomesUS 6,915,560 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,915,560
• Apple Inc. / HTC Corporation et al. v. Memory Integrity, LLCSome claims unpatentable
  PTAB · Jun 21, 2016 · IPR2015-01376 · APJ Kerry Begley · IPR · Final written decision

  Claims 1–3, 8, and 15–25 are unpatentable: Pong anticipates claims 1–3, 8, 15, 16, and 25; Pong and Smith render claims 17–24 obvious. Claim 11 is not shown unpatentable.

  RulingsFinal written decision

  • BurdenOther

    “and 37 C.F.R. § 42.73. Having considered the record before us, we determine Petitioner has shown by a preponderance of the evidence that claims 1–3, 8, and 15–25 of the ’121 patent are unpatentable. See 35 U.S.C. § 316(e). Petitioner, however, has not demonstrated by a preponderance of the evidence that claim 11 is unpatentable.” slip op. at 3

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “Communications AB, Sony Mobile Communications (USA) Inc., LG Electronics, Inc., LG Electronics USA, Inc., and LG Electronics Mobilecomm USA, Inc. (collectively, “Subsequent Petitioners”; and with Initial Petitioners, “Petitioner”) filed a Petition in IPR2015-01376, requesting inter partes review of claims 1–3, 8, 11, 12,3 and 15–25 of the 2 The Petition also lists Samsung Telecommunications America, LLC (“STA”) as a petitioner. Paper 6 (“Pet.”), 1. After the filing of the Petition, however, STA merged with and into Samsung Electronics America, Inc. Paper 10. Thus, STA no longer exists as a separate corporate entity. Id. 3 Subsequent Petitioners represented that they included claim 12 “merely to conform” to the Petition and motion for rehearing of the Institution Decision, regarding claim 12, that was pending before the Board and that if the motion was denied, they requested joinder on “all claims except claim 12.” IPR2015-01376, Paper 3 (“IPR2015-01376 Pet.”), 1 n.1, 33 n.5. Because we denied the motion, we understood Subsequent Petitioners to no longer maintain their challenge of claim 12 and to the extent they did, we determined they had not shown the IPR2015-01376 Petition warranted institution of review of the claim. IPR2015-01376, Paper 12, at 12–15. IPR2015-01376 Pet. Subsequent Petitioners also filed a motion for joinder with this proceeding, which we granted. IPR2015-01376, Papers 4, 12.” slip op. at 2

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “addresses Koster—a prior art U.S. patent of record as Exhibit 1009 that was filed on July 13, 2004 and issued on April 13, 2004—Patent Owner’s failure to demonstrate enablement of the proposed substitute claims results in a failure to demonstrate novelty and non-obviousness of the proposed substitute claims over the prior art of record. When arguing how the limitations of the proposed substitute claims distinguish them from the disclosures of the references of record, Patent Owner’s Motion addresses Koster only by asserting that “[a]s to . . . Koster . . . , because, as discussed above, all of the substitute claims find support in the [’]347 Application, . . . Koster . . . is not prior art to any of the proposed substitute claims.” Mot. 22. Because Patent Owner does not persuade us that the proposed substitute claims are enabled by the disclosure in the ’347 Application, we find unpersuasive Patent Owner’s suggestion that the proposed substitute claims are entitled to the filing date of the ’347 Application. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (“For a patent to claim priority from the filing date of its provisional application, . . . the specification of the provisional must . . . enable an ordinarily skilled artisan to practice the invention claimed in the non-provisional application.”) (internal citation and quotations omitted); Hyatt v. Boone, 146 F.3d 1348, 1352 (Fed. Cir. 1998) (“The earlier application must contain a written description of the subject matter of the interference count, and must meet the enablement requirement.”); see also Novo Nordisk Pharm., Inc. v. Bio-Tech. Gen. Corp., 424 F.3d 1347, 1359 (Fed. Cir. 2005) (“[If] the 1983 PCT application was . . . not enabled, Novo would not be able to rely upon the application’s priority date to overcome the Brewer patent.”). Accordingly, we also find unpersuasive Patent Owner’s assertion basis for asserting that the proposed substitute claims are patentable over Koster (by itself or in combination with other references of record), we conclude that Patent Owner has not met its burden of demonstrating patentability of the proposed substitute claims over the references of record. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1307 (Fed. Cir. 2015) (upholding Board’s requirement that patent owner “show patentable distinction [of the substitute claims] over the prior art of record”); Opp. 1–4. Thus, Patent Owner has not met its burden for proposed substitute claims 26–34.” slip op. at 84

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Decision and maintain in this Decision—in which “states” is not limited to cache coherency states—we determine that Pong’s presence bit vector discloses the recited “probe filtering information” “representative of states associated with selected ones of the cache memories,” where either the write update or the write invalidate protocol is implemented. See Inst. Dec. 7–10; supra § II.B.1.a. First, under this construction, there is no dispute that “states associated with selected ones of the cache memories” includes presence. See Inst. Dec. 9–10; PO Resp. 25 (arguing that Petitioner’s argument that the presence bit vector represents the “state” of presence allegedly is foreclosed only by Patent Owner’s proposed “construction of state as a cache coherence protocol state”); id. at 1–11, 25–27; Reply 15; Ex. 3001, 497–48 (definition of “state”); Ex. 2016 ¶ 87. Nor is there any dispute that the bits in Pong’s presence bit vector represent this state of presence. Pong discloses that when a bit in the presence bit vector is set, the processor that corresponds to the bit “has a copy of the data block,” i.e., a copy of the data block is present. Ex. 1003 ¶ 51. Accordingly, we agree with Petitioner that in both the write update and write invalidate protocols, a set bit represents the state of presence of a cached copy of the data block in a” slip op. at 42

  Patent outcomesUS 7,296,121 mixed
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 7,296,121
• Apple Inc. / HTC Corporation et al. v. Memory Integrity, LLCSome claims unpatentable
  PTAB · Jun 21, 2016 · IPR2015-00163 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 4–6 and 19–24 are unpatentable over Koster and Koster with Smith, respectively; claims 11 and 12 were not shown unpatentable, and the motion to amend was denied.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “ANALYSIS A. Level of Ordinary Skill in the Art We begin our analysis by addressing the level of ordinary skill in the art. Dr. Horst and Dr. Oklobdzija agree that a person of ordinary skill in the art would have had at least a “bachelor’s degree in electrical engineering, computer engineering, or computer science” and “two years of experience in the design of multiprocessor systems.” Ex. 1014 ¶ 8; Ex. 2016 ¶ 8. We adopt this proposal as the level of ordinary skill in the art, based on the testimony of the parties’ experts as well as our review of the ’121 patent and the prior art involved in this proceeding.” slip op. at 8

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

    “evidence in Patent Owner’s Response, we remain unpersuaded that the ’121 patent supports limiting the broadest reasonable construction of “states” solely to cache coherence protocol states. A claim term will be interpreted more narrowly than its ordinary and customary meaning only under two circumstances: (1) the “patentee sets out a definition and acts as [its] own lexicographer,” or (2) the “patentee disavows the full scope of a claim term either in the specification or during prosecution.” Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012). To disavow claim scope, the specification or prosecution history must “make[] clear that the invention does not include a particular feature” and the feature is then “deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification” or prosecution history, “might be considered broad enough to encompass the feature in question.” SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001); see Aventis, 675 F.3d at 1330. To disavow claim scope, the patentee may “include[e] in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Aventis, 675 F.3d at 1330 (internal quotations omitted). In this context, it is not sufficient “that the only embodiments, or all of the embodiments, contain a particular limitation.” Id.” slip op. at 11

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

    “The heart of the dispute regarding this limitation, however, lies in whether the disclosure of microprocessors as devices in a system necessarily discloses that those microprocessors are “programmed.” Because the ’121 patent does not illuminate this issue, but instead the parties rely on expert testimony and other extrinsic evidence to support their respective positions, we consider this issue to more properly fall within the category of unpatentability as opposed to claim construction. See Pet. 34–36; PO Resp. 12–19, 25–29; Reply 5–8. Thus, we do not further construe the term “programmed” other than to note that the ’121 patent uses the term in the ordinary and customary manner. See Ex. 1001, 7:49–52, 27:64–28:24, 29:1–3; Ex. 2012, 359; Ex. 2013, 590–91; Ex. 2014, 931.” slip op. at 24

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “reasonable likelihood of prevailing on this proposed ground of unpatentability. Inst. Dec. 19–24. We have reviewed Petitioner’s anticipation arguments and supporting evidence, including Koster’s disclosure, the detailed arguments appearing on pages 31–38 of the Petition, and the testimony of Dr. Horst. Despite the counter-arguments in Patent Owner’s Response, and the evidence cited therein, which we also have considered, Petitioner has shown, by a preponderance of the evidence, that each of claims 4–6 is unpatentable under 35 U.S.C. § 102 as anticipated by Koster. Petitioner, however, has not shown, by a preponderance of the evidence that Koster anticipates claims 11 and 12.” slip op. at 27

  Patent outcomesUS 7,296,121 mixed
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 7,296,121
• Apple Inc. / HTC Corporation et al. v. Memory Integrity, LLCSome claims unpatentable
  PTAB · Jun 21, 2016 · IPR2015-00159 · APJ Kerry Begley · IPR · Final written decision

  Claims 1–3, 8, and 15–25 are unpatentable: Pong anticipates claims 1–3, 8, 15, 16, and 25, and Pong and Smith render claims 17–24 obvious; claim 11 was not shown unpatentable.

  RulingsFinal written decision

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

    “Electronics Co. Ltd., Samsung Electronics America, Inc.,2 and Amazon.com, Inc. (collectively, “Initial Petitioners”) filed a Petition requesting inter partes review of claims 1–3, 8, and 11–25 of U.S. Patent No. 7,296,121 B2 (Ex. 1001, “the ’121 patent”). Pet. Pursuant to 35 U.S.C. § 314(a), we determined the Petition showed a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of claims 1–3, 8, 11, and 15–25, and instituted an inter partes review of these claims. Paper 12 (“Inst. Dec.”). We, however, did not institute review of claims 12–14, because we determined the Petition did not show a reasonable likelihood that Petitioner would prevail with respect to these claims. Id. at 23–30.” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Dr. Horst’s testimony that as a result, from the perspective of the presence bit vector, “every processor indicated as storing a copy of the memory line in its cache is storing a valid copy.” Ex. 1014 ¶ A-11; see Pet. 26–27. In other words, as Dr. Horst testifies, “because a write update protocol always updates caches to keep them valid,” “when a cache line is present[,] it is necessarily valid.” Ex. 1025 ¶ 23; see Reply 17–18. Indeed, Dr. Oklobdzija agrees that because the write update protocol “force[s the caches] to update their value for a cache line every time it changes”—as Pong discloses— “every processor that has the cache line will have the line in a valid state.” Ex. 2016 ¶ 90 (emphasis added); Ex. 1003 ¶ 48; see also Tr. 115:1–23 (Patent Owner conceding that in a write update protocol, any cached copies could be “considered . . . to be valid” because they are “kept usable” and “updated”). Accordingly, based on Pong’s disclosures, as well as the explanatory testimony of Dr. Horst in addition to Dr. Oklobdzija, we determine that in the write update protocol, a set bit in Pong’s presence bit vector represents that the corresponding cached copy is present and valid.” slip op. at 44

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

    “2. OBVIOUSNESS OVER PONG AND SMITH We turn to the instituted obviousness ground alleging that claims 17–” slip op. at 73

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “addresses Koster—a prior art U.S. patent of record as Exhibit 1009 that was filed on July 13, 2004 and issued on April 13, 2004—Patent Owner’s failure to demonstrate enablement of the proposed substitute claims results in a failure to demonstrate novelty and non-obviousness of the proposed substitute claims over the prior art of record. When arguing how the limitations of the proposed substitute claims distinguish them from the disclosures of the references of record, Patent Owner’s Motion addresses Koster only by asserting that “[a]s to . . . Koster . . . , because, as discussed above, all of the substitute claims find support in the [’]347 Application, . . . Koster . . . is not prior art to any of the proposed substitute claims.” Mot. 22. Because Patent Owner does not persuade us that the proposed substitute claims are enabled by the disclosure in the ’347 Application, we find unpersuasive Patent Owner’s suggestion that the proposed substitute claims are entitled to the filing date of the ’347 Application. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (“For a patent to claim priority from the filing date of its provisional application, . . . the specification of the provisional must . . . enable an ordinarily skilled artisan to practice the invention claimed in the non-provisional application.”) (internal citation and quotations omitted); Hyatt v. Boone, 146 F.3d 1348, 1352 (Fed. Cir. 1998) (“The earlier application must contain a written description of the subject matter of the interference count, and must meet the enablement requirement.”); see also Novo Nordisk Pharm., Inc. v. Bio-Tech. Gen. Corp., 424 F.3d 1347, 1359 (Fed. Cir. 2005) (“[If] the 1983 PCT application was . . . not enabled, Novo would not be able to rely upon the application’s priority date to overcome the Brewer patent.”). Accordingly, we also find unpersuasive Patent Owner’s assertion basis for asserting that the proposed substitute claims are patentable over Koster (by itself or in combination with other references of record), we conclude that Patent Owner has not met its burden of demonstrating patentability of the proposed substitute claims over the references of record. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1307 (Fed. Cir. 2015) (upholding Board’s requirement that patent owner “show patentable distinction [of the substitute claims] over the prior art of record”); Opp. 1–4. Thus, Patent Owner has not met its burden for proposed substitute claims 26–34.” slip op. at 84

  Patent outcomesUS 7,296,121 mixed
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 7,296,121
• Apple Inc. / HTC Corporation et al. v. Memory Integrity, LLCSome claims unpatentable
  PTAB · Jun 21, 2016 · IPR2015-01353 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 4–6 are unpatentable as anticipated by Koster, claims 19–24 are unpatentable as obvious over Koster and Smith, and claims 11–12 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “ANALYSIS A. Level of Ordinary Skill in the Art We begin our analysis by addressing the level of ordinary skill in the art. Dr. Horst and Dr. Oklobdzija agree that a person of ordinary skill in the art would have had at least a “bachelor’s degree in electrical engineering, computer engineering, or computer science” and “two years of experience in the design of multiprocessor systems.” Ex. 1014 ¶ 8; Ex. 2016 ¶ 8. We adopt this proposal as the level of ordinary skill in the art, based on the testimony of the parties’ experts as well as our review of the ’121 patent and the prior art involved in this proceeding.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner

    “For the reasons discussed below, however, despite the arguments and evidence in Patent Owner’s Response, we remain unpersuaded that the ’121 patent supports limiting the broadest reasonable construction of “states” solely to cache coherence protocol states. A claim term will be interpreted more narrowly than its ordinary and customary meaning only under two circumstances: (1) the “patentee sets out a definition and acts as [its] own lexicographer,” or (2) the “patentee disavows the full scope of a claim term either in the specification or during prosecution.” Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012). To disavow claim scope, the specification or prosecution history must “make[] clear that the invention does not include a particular feature” and the feature is then “deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification” or prosecution history, “might be considered broad enough to encompass the feature in question.” SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001); see Aventis, 675 F.3d at 1330. To disavow claim scope, the patentee may “include[e] in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Aventis, 675 F.3d at 1330 (internal quotations omitted). In this context, it is not sufficient “that the only embodiments, or all of the embodiments, contain a particular limitation.” Id.” slip op. at 11

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

    “The heart of the dispute regarding this limitation, however, lies in whether the disclosure of microprocessors as devices in a system necessarily discloses that those microprocessors are “programmed.” Because the ’121 patent does not illuminate this issue, but instead the parties rely on expert testimony and other extrinsic evidence to support their respective positions, we consider this issue to more properly fall within the category of unpatentability as opposed to claim construction. See Pet. 34–36; PO Resp. 12–19, 25–29; Reply 5–8. Thus, we do not further construe the term “programmed” other than to note that the ’121 patent uses the term in the ordinary and customary manner. See Ex. 1001, 7:49–52, 27:64–28:24, 29:1–3; Ex. 2012, 359; Ex. 2013, 590–91; Ex. 2014, 931.” slip op. at 24

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Petitioner fails to proffer evidence sufficient to rebut Patent Owner’s evidence that Koster’s disclosure of a microprocessor does not necessarily disclose that the microprocessor is programmed. Dr. Horst, in his original declaration, asserts that “a requesting microprocessor must be programmed to complete a memory transaction after receiving a first number of responses to a first data request.” Ex. 1014 ¶¶ D-17–D-18. This assertion, however, is conclusory, and does not sufficiently explain why the microprocessor must be programmed or exclude possibilities other than programming. See id.; PO Resp. 27. In particular, Dr. Horst’s original declaration testimony provides no discussion or explanation as to whether a microprocessor composed solely of hardwired logic would necessarily be programmed and whether the functionality described in Koster could not be implemented using hardwired logic. See Ex. 1014 ¶¶ D-17–D-18; PO Resp. 27.” slip op. at 34

  Patent outcomesUS 7,296,121 mixed
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 7,296,121
• Mobotix Corp. v. Comcam International, Inc.Some claims unpatentable
  PTAB · Apr 28, 2016 · IPR2015-00093 · APJ Neil T Powell · IPR · Final written decision

  Claims 1–6 and 9–28 are unpatentable as obvious over Thomas and Fernandez; claims 7 and 8 were not shown unpatentable on that ground.

  RulingsFinal written decision

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

    “Claim Interpretation In an inter partes review, claim terms in an unexpired patent are construed according to their broadest reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b); see In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed.Cir.2015), cert. granted sub nom. Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 890 (mem.) (2016). 1. website (independent claims 1 and 25) Petitioner asserts that the broadest reasonable interpretation of the term “website” is “a computer system that has a recognized domain name and runs a Web server for publishing a group of related webpages on the Web.” Pet. 3 (citing Ex. 1005). Based on our analysis below, we determine that the claim term “website” does not require express construction for purposes of this Decision.” slip op. at 6

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

    “[The] claim language clearly states that the triggering sensor is in an area covered by “a particular imaging device” (emphasis added), not necessarily within an area covered by “the imaging device” activated. Consistent with this, the claim language “capturing event data associated with the event detected at a particular at least one sensor” (emphasis added) does not require that the triggering sensor is in an area covered by the activated imaging device, as an imaging device would not need to cover the area occupied by a sensor to capture event data associated with an event detected by the sensor.” slip op. at 8

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

    “and a sensor sending a signal indicating an event has been detected, we are persuaded that Fernandez teaches this in its statement that detectors may sense state and that, “[i]n certain instances, e.g. unauthorized home entry, such sensed state may trigger other functionality, such as taking electronic photograph and/or notifying certain entities.” Ex. 1007, col. 4, ll. 47–50; Pet. 40–41; Pet. Reply 11–13; Ex. 1003 ¶¶ 128–130. We also are persuaded that it would have been obvious to operate Thomas’s system in accordance with this teaching, i.e., to activate the living room camera in response to the living room motion sensor sending a signal indicating that an event has been detected. Pet. 40–41; Pet. Reply 11–13; Ex. 1003 ¶¶ 122–131.” slip op. at 31

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “We are not persuaded that Mr. Monroe correctly identifies the principle of operation of Thomas. In particular, we find that the principle of operation of Thomas is not as narrow as Mr. Monroe asserts. Thomas discloses that: Broadly speaking, the invention relates to improved techniques to remotely monitor locations and to remotely monitor and control devices or appliances through a network. In one embodiment, the network in the Internet and the transmission is facilitated by an Internet server or electronic mail. The remote monitoring of locations is provided by efficiently transmitting images over the network to a remote machine located at a remote location. In one embodiment, the efficiency is facilitated by comparing a current image with a reference image, and then only transmitting the current image if it differs from the reference image by more than a predetermined threshold amount. The remote monitoring can also operate as an alarm system or provide intruder detection based on detected changes in images from a locally provided camera.” slip op. at 35

  Patent outcomesUS 6,975,220 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 6,975,220
• Blackberry Corp. / Blackberry Ltd. v. Zipit Wireless, Inc.Some claims unpatentable
  PTAB · Mar 29, 2016 · IPR2014-01509 · APJ Frances L Ippolito · IPR · Final written decision

  Claims 1, 2, and 4–7 are unpatentable over the stated obviousness grounds; claims 9, 10, and 12 were not shown unpatentable over Lotter.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert discountedOther

    “Ex. 2082 ¶ 94. While an argument may be made that Dr. Konchitsky’s description of his Master’s degree is merely harmless embellishment or an artful rewording having the same effective meaning, we find that Dr. Konchitsky, nevertheless, incorrectly described his Master’s degree and misrepresented his credentials to the Board. Further, that Dr. Konchitsky may be qualified to testify based on his undergraduate degrees and experience, as asserted by Patent Owner (Tr. 21:16–5), does not mitigate Dr. Konchitsky’s misrepresentation of his credentials nor preclude us from weighing his testimony in light of such misrepresentation. We expect all parties and individuals involved in proceedings before the Board to “have a duty of candor and good faith to the Office during the course of a proceeding.” 37 C.F.R. § 42.11. Moreover, we agree with the sentiment that “[e]ven the slightest accommodation of deceit or a lack of candor in any material respect quickly erodes the validity of the process. As soon as the process falters in that respect, the people are then justified in abandoning support for the system in favor of one where honesty is preeminent.” United States v. Shaffer Equip. Co., 11 F.3d 450, 457–59 (4th Cir. 1993). Therefore, we will consider Dr. Konchitsky’s statements regarding his Master’s degree in affording his testimony the appropriate weight.” slip op. at 10

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

    “Based on the complete record before us, we agree with the parties that the broadest reasonable interpretation of the term “database” is “a collection of information or data that is structured or organized to allow access and retrieval of the information by a computer.” This interpretation is consistent with the Specification, which, for example, describes device database 58 as storing identification data and allowing access of stored identification data by gateway 54. See Ex. 1001, 5:4–7, 8:7–9. Therefore, we adopt this construction. Moreover, we agree with Petitioner’s position that a “database” as claimed does not require a specific type of structure and even the “simplest” structure or organization of information would satisfy the element. The literal language of the claim language does not require fields, records, etc., and does not exclude the use of lists. Additionally, we determine that the literal language of the claim terms “control database” and “regulation database” do not require separate and distinct databases. Further, we have considered both parties’ arguments regarding the respective position each has taken in the related district court proceeding. These arguments are instructive, but not binding on our construction of the claim term “database” in our review. For example, Dr. Brody’s testimony in the district court proceeding that the Specification describes individual control and regulation databases (Ex. 2001 ¶ 191) does not persuade us that the claim terms require separate and distinct databases. It is well-settled that even “the fact that the specification describes only a single embodiment, standing alone, is insufficient to limit otherwise broad claim language.” Howmedica Osteonics Corp. v. Wright Med. Tech., Inc., 540 F.3d 1337, 1345 (Fed. Cir. 2008); see also Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (“Although the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.”). Accordingly, we construe the term “database” as “a collection of information or data that is structured or organized to allow access and retrieval of the information by a computer,” and do not limit “control database” and “device database” to separate and distinct databases.” slip op. at 14

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

    “upon by the Petitioner clearly and unequivocally disclose the invention as recited in claim 9 of the ’694 patent “without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.” See In re Arkley, 455 F.2d 586, 587 (CCPA 1972). First, although Lotter’s Abstract indicates an alert “and/or” message may be provided, this disclosure is not directed to the flowcharts of Figures 3A–3O, 6A–6B, and 7A–7B. Thus, based on the complete record before us, it is unclear whether this single sentence in the Abstract suggests the combination of the two embodiments shown in the Figures 3A–3O, 6A–6B, and 7A–7B, and if so, what aspects or steps of the flowcharts would be combined. See In re Brink, 419 F.2d 914, 917 (CCPA 1970) (“[I]f a reference is ambiguous and can be interpreted so that it may or may not constitute an anticipation of an appellant’s claims, an anticipation rejection under 35 U.S.C. § 102 based upon the ambiguous reference is improper.”). We decline to speculate on how the combination may be accomplished or whether such a combination would teach or suggest the features recited in claim 9 of the’694 patent.” slip op. at 27

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

    “Furthermore, we do not agree with Dr. Konchitsky’s position that a “PHOSITA would not seek to combine the teachings of de-centralized control of mobile devices with small networks of wireless access points, with Lotter. Such teachings are contrary to the purposes of, and would not be understood to operate with, Lotter.” Ex. 2004 ¶ 148. First, Patent Owner reads the purposes of Lotter and Walter too narrowly. As Petitioner discerns, Lotter and Walter are more generally directed to systems and methods for regulating the network and data service use of electronic devices such as mobile communication devices. Ex. 1005, Abstract, 1:58– 2:12; Ex. 1007 ¶¶ 12, 16. Second, we do not agree that the differences between Lotter’s and Walter’s systems are so great as to render their combination “contrary” or inoperable. Dr. Konchitsky observes Walter’s policies may be imposed on a wireless device “regardless” of what is already in Lotter’s Permissions database. Ex. 2004 ¶ 148. Assuming Dr. Konchitsky’s reading of Walter to be correct, we are not persuaded that adding another category of data service use restriction/rule/policy to Lotter’s system is incompatible with or contrary to Lotter’s general purpose of regulating data service use by mobile communication devices. Rather, the combination with a Walter-type policy provides the added feature of “different policy/control data for different predetermined networks at different locations because the policy controls on one network location, for example a school, would vary compared to another location, for example and office building” as explained by Dr. Brody. Ex. 1003 ¶ 84. Furthermore, Dr. Konchitsky’s statement that Walter’s teachings “would not be understood to operate with, Lotter” is not supported by the record with any evidence or technical reasoning as to why a person of ordinary skill in the art would determine that a combination of Lotter’s and Walter’s teachings “would not operate.” Thus, with regard to this statement, Dr. Konchitsky’s testimony is entitled to little to no 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.”). Accordingly, we conclude that Petitioner has demonstrated by a preponderance of the evidence that claim 6 would have been obvious over Lotter, Patron, and Walter.” slip op. at 48

  Patent outcomesUS 8,190,694 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,190,694
• Saint-Gobain Abrasives, Inc. v. 3M Innovative Properties CompanySome claims unpatentable
  PTAB · Feb 23, 2016 · IPR2014-01281 · APJ Richard E Rice · IPR · Final written decision

  Claims 1–8, 12, 23, 24, and 29–33 are unpatentable as obvious over Spitznagel and De Schrijver; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “Petitioner agrees that the level of ordinary skill in the art includes a bachelor’s degree in mechanical engineering, or a similar field, or at least two years of experience designing fluid-dispensing devices, but disputes Patent Owner’s contention that the level of ordinary skill includes at least two years of experience operating fluid-dispensing devices. Pet. Reply 3 (citing Ex. 1002 ¶ 16). Petitioner argues that Patent Owner’s definition “is so low that it is met by a person operating a garden hose for two years.” Pet. Reply 3. Based on the competing arguments and evidence of record we determine that a POSA would have had at least a bachelor’s degree in mechanical engineering, or a similar field, or at least two years of work experience in mechanical engineering, or a similar field.” slip op. at 11

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

    “1. “adapter” Patent Owner proposes three dictionary definitions for “adapter”: (1) “a device for connecting pieces of equipment that cannot be connected directly”; (2) “a device, mechanism, or fitting used to mate two parts of different design, shape, or size to each other”; and (3) a “device for connecting parts that will not mate.” PO Resp. 16–17 (citing Exs. 2003, 2004, 2005). Petitioner does not dispute the proposed dictionary definitions. See Pet. Reply 5. We are persuaded that Patent Owner’s proposed dictionary definitions establish the ordinary and customary meanings of “adapter” as would be understood by one of ordinary skill in the art in the context of the entire disclosure and adopt them, collectively, as the broadest reasonable interpretation consistent with the ’780 Patent Specification.” slip op. at 12

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

    “Third, we determine that Petitioner has provided articulated reasoning with rational underpinning sufficient to support the legal conclusion of obviousness. Pet. 20–21; see KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Based on Mr. Leinsing’s testimony, one of skill in the art would have been motivated to use a bayonet coupling as disclosed by De Schrijver at the cup end of Spitznagel’s adapter, instead of a threaded connection, for its known benefit of providing a relatively quick mechanism to attach and remove a paint cup to and from a gravity-fed spray gun. See Ex. 1002 ¶¶ 96–99. We have considered Patent Owner’s opposing arguments, but find them unpersuasive. We disagree, for example, that De Schrijver teaches away. PO Resp. 37 (citing Ex. 1009, 8:18–25). While De Schrijver expresses a general preference for self-contained portable guns, Patent Owner has not shown sufficiently that De Schrijver criticizes, discredits, or otherwise discourages investigation into the invention claimed. See Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (citing In re Fulton, 391 F.3d 1195, 1201 (Fed.Cir.2004)). Patent Owner’s argument that the gravity-fed paint spray gun of Spitznagel is “fundamentally different” from, and “technically incompatible” with, the aerosol application gun of De Schrijver is largely unresponsive to the relevant De Schrijver teaching that threaded and bayonet connections are substitutable. See Pet. Reply 6–7 (citing Ex. 1002 ¶ 99). As discussed above, that teaching is not limited to connections between an adapter and the aerosol container of De Schrijver’s application gun, but extends to connections between an adapter and other types of fluid containers such as the paint pot of Spitznagel’s gravity-fed paint spray gun. See In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (holding that “it is not necessary that the inventions of the references be physically combinable to render obvious the invention under review”).” slip op. at 24

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “We have considered Patent Owner’s opposing arguments, but find them unpersuasive. We disagree, for example, that De Schrijver teaches away. PO Resp. 37 (citing Ex. 1009, 8:18–25). While De Schrijver expresses a general preference for self-contained portable guns, Patent Owner has not shown sufficiently that De Schrijver criticizes, discredits, or otherwise discourages investigation into the invention claimed. See Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (citing In re Fulton, 391 F.3d 1195, 1201 (Fed.Cir.2004)). Patent Owner’s argument that the gravity-fed paint spray gun of Spitznagel is “fundamentally different” from, and “technically incompatible” with, the aerosol application gun of De Schrijver is largely unresponsive to the relevant De Schrijver teaching that threaded and bayonet connections are substitutable. See Pet. Reply 6–7 (citing Ex. 1002 ¶ 99). As discussed above, that teaching is not limited to connections between an adapter and the aerosol container of De Schrijver’s application gun, but extends to connections between an adapter and other types of fluid containers such as the paint pot of Spitznagel’s gravity-fed paint spray gun. See In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (holding that “it is not necessary that the inventions of the references be physically combinable to render obvious the invention under review”).” slip op. at 24

  Patent outcomesUS 8,424,780 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,424,780

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.