• Kiosoft Technologies, LLC / Techtrex, Inc. v. Payrange Inc.Some claims unpatentable
  PTAB · Dec 14, 2022 · PGR2021-00093 · APJ Ken B Barrett · PGR · Final written decision

  Claims 1–6, 8–10, 14, 15, and 18–25 are unpatentable under § 101; claims 7, 11–13, 16, and 17 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. The Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (internal quotation marks and citation omitted). Petitioner contends: A [person of ordinary skill in the art (“POSITA” or “POSA”)] at the time of the earliest claimed filing date of the ’614 Patent would have had an education background of, or practical experience providing an equivalent to, a Bachelor of Science in Electrical Engineering, Computer Science, Information Technology, or a related/equivalent field and at least 3 years of academic or industry experience in electronic payment systems. Pet. 16 (citing Ex. 1003 ¶¶ 5–6). Patent Owner affirmatively states that it does not dispute Petitioner’s asserted educational background of a person of ordinary skill in the art. PO Resp. 7. Patent Owner does not dispute Petitioner’s proposed number of years of experience, instead contending that “the claims are patentable regardless of the number of years of work experience a POSA would have had.” Id. (citing Ex. 2019 ¶¶ 49–58). Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). We adopt Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 8

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

    “construction disputes to find that Petitioners have failed to satisfy their burden of proof.” PO Resp. 8. Patent Owner goes on to state its agreement with Petitioner’s proposed construction for the “identifying” limitation (id. at 9) and indicate its disagreement with certain of Petitioner’s proposals (id. at 9–14). Patent Owner confirmed at the oral argument that no claim term needs to be construed to reach a dispositive issue. Tr. 33:23–34:5. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes.” slip op. at 11

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner

    “All of the claimed method steps of claim 1 occur “at the mobile device” (element 1.1), and the method includes a step of enabling user interaction with the user interface to complete the vending transaction (element 1.9). Id. at 46:61–65, 47:24–28. Claim 1 does not recite completing the purchase. The ’614 patent describes a commercial transaction completed at the payment accepting unit (i.e. the vending machine), not at the mobile device. Ex. 1001, 7:15–19; see also id. at 16:46–50; 17:57–59; 19:17–20; 19:35–38. We, thus, agree with Patent Owner that the claimed method does not require completing or conducting the transaction, but only enabling the completion of the transaction. On this complete record, we are persuaded that the elements block quoted above recite the concept of identifying a merchant and enabling completion of a purchase from the merchant. See Pet. 20 (arguing that the claimed method “is no less abstract than a customer noticing a store, making a purchase, and receiving a receipt.”); Pet. Reply 5 (arguing that the claim describes “nothing more than a customer noticing and identifying a store amongst multiple stores based on the unique visual image of that store, entering the store and communicating with the merchant, making a purchase, and receiving a receipt—all while using conventional tools.”). In particular, claim 1 recites a step for identifying a merchant based on its advertised presence—identifying a nearby vending machine that is available to accept payment from a mobile payment application, with that identifying involving the broadcasting of predefined radio messages.8 Claim 1 also recites steps for enabling completion of a purchase from the merchant— establishing a communication connection between the user’s device and the vending machine; displaying an interface that allows a user to select a vending machine, to trigger payment for the vending transaction, and to enable the completion of the transaction; and updating the user interface after receiving information from the vending machine regarding the transaction (which, as indicated by dependent claim 3, may be information indicating that the vending transaction was completed). Our slight revision of the abstract idea from what we previously stated in our Institution Decision does not impact the patentability analysis. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016).” slip op. at 17

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptMixed

    “As discussed above, the Specification indicates that the short-range communication between the vending machine and mobile device can be not only conventional technologies such as Bluetooth, near-field communication (NFC), and radio frequency identification (RFID), but also could be “any wired or wireless technology that could be used to communicate a small distance (approximately a hundred feet or closer) that is known.” Ex. 1001, 9:57–67. The Specification ties that technology to the “broadcast” in claim 1 (id. at 47:2–5). For example, the Specification explains that “[e]ach adapter module 100 [of the vending machine] advertises its presence by broadcasting signals (advertising broadcast signals) to mobile devices in the zones 102, 104, 106.” Id. at 10:43–45. “The outermost range is the Bluetooth range 106 . . . [and] is the area in which the adapter module 100 is able to broadcast its presence.” Id. at 18:29–33. Further, Dr. Shamos testified that the Bluetooth protocol requires that two devices wishing to interact with each other identify themselves to each other. Ex. 1030, 102:3– 24. Dr. Shamos also testified that the Low prior art reference discloses that a vending machine identifies itself to the user. Id. at 100:9–20; see Ex. 1007, 2:25–28 (Low stating that, “in some embodiments, multiple machines may send their unique identifiers, such that the user is able to select one or more machines to purchase from.”). Thus, the abstract idea of identifying a merchant is implemented by nothing more than well-known, routine, and conventional wireless communications.” slip op. at 39

  Patent outcomesUS 10,891,614 mixed
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Mayo · Bilski · Phillips · KSR · Graham · Nautilus
  Patents in suitUS 10,891,614
• Nanya Technology Corporation / Nanya Technology Corporation, U.S.A. et al. v. Monterey Research, LLCSome claims unpatentable
  PTAB · Jun 2, 2022 · IPR2021-00170 · APJ Brian D Range · IPR · Final written decision

  Claim 1 is unpatentable as obvious over McClure in view of Merritt, Issa, or Kawasumi; Petitioner did not prove claims 2 and 3 unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A. Person of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have been a technical person having “a Bachelor’s degree in electrical engineering, computer engineering, applied physics, or a related field, and approximately two years of experience working in the design, development, and/or testing of memory circuits, related hardware design, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 11. For purposes of this inter partes review, Patent Owner adopts Petitioner’s definition. Resp. 13. Based on the totality of the record including the ’429 patent specification, cited references, and expert testimony, we find that Petitioner’s definition for a person of skill in the art is appropriate.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “amplifiers “by the strobe reset generator instead [of] by the strobe global word line (gwlstrobe) 52”). The Figure 1 apparatus, at the location of the purple oval, merely conveys a strobe signal (gwlstrbuf 20) on a line without substantially changing that signal. Id. Fig. 1. The Figure 2 apparatus, however, illustrates main amp strobe 60 generating output signal 88 by delaying the gwlstrbuf signal output by buffer 58. Id. at 4:6–9, Fig. 2. Given the context of the ’429 patent specification, we decline to construe “main amplifier strobe” in a manner that would fail to distinguish Figure 2’s main amplifier strobe from Figure 1’s unlabeled strobe-carrying line (identified with a purple oval above). See id. (identifying main amp strobe 60 as a “main amplifier strobe circuit 60”). If Figure 2’s identification of a “main amplifier strobe 60” is to be distinguishable from Figure 1’s lack of any identified main amplifier strobe 60, the main amplifier strobe has to be more than just a mere strobe signal or line that carries a strobe signal. The ’429 patent specification explains that “first main amplifier strobe circuit 60 delays the rising edge of the output of the buffer 58” to “ensure[] that the local amplifiers 82, 84, 86 stay on until the main amplifier 108 is on.” Id. at 4:6–9. While we decline to import this exact functionality from the specification into claim 1’s “main amplifier strobe,” based on the discussion above, the main amplifier strobe must affect the transmitted signal and it must affect the signal consistent with the word “strobe.” See Phillips, 415 F.3d at 1323 (“[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.”).” slip op. at 13

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Petitioner argues that a person having ordinary skill in the art would have modified McClure’s memory core “such that each sense amplifier 602 is coupled to a pair of global read data lines as taught by Winograd, Merritt, Issa, and Kawasumi.” Pet. 66. The preponderance of the evidence supports this position at least as to Merritt, Issa, and Kawasumi. Petitioner’s declarant, Dr. Chmelar, states that a person of skill in the art would have modified McClure to “reduce power consumption, circuit areas, and/or readaccess time because the plurality of global data bus drivers 606 . . . could be eliminated.” Ex. 1003 ¶ 215. Dr. Chmelar’s testimony on this point is credible and well-supported by the evidence. As explained above, Merritt, Issa, and Kawasumi all teach local amplifiers coupled to global read data lines, and a person of skill in the art would have recognized the advantages of the global read data line configuration by studying those references. Petitioner’s position is further supported by the ’429 patent which admits that a structure of local amplifiers connected to global read data lines was known prior art. In particular, Figure 1 of the ’429 patent illustrates “conventional solution” prior art having local amplifiers 22, 24, and 26 connected to global read data lines 38 and 40. Ex. 1001, Fig. 1, 1:26–48 (“The local amplifiers 22, 24, 26 then drive the gdrd (global read data) lines 38, 40.”); see also Pet 8–9 (mapping claim elements to Figure 1). Patent Owner argues that Petitioner does not establish reason to combine the references’ teachings. Resp. 60–62. We disagree for the reasons explained above. The record as a whole, even if the ’429 patent’s disclosure were not considered, supports by a preponderance of the evidence that connecting local amplifiers to global read data lines was a well-known configuration. See supra 27–32. Connecting McClure’s local amplifiers to global read data lines is no more than use of a known method to yield predictable results. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007). Patent Owner also argues that Kawasumi criticizes its Figure 1 prior art “for its arrangement of having multiple amplifiers connected to global data lines.” Resp. 61–63; see also Ex. 2001 ¶ 176 (Patent Owner’s declarant Dr. Hassoum stating that Kawasumi says the Figure 1 arrangement is problematic). Patent Owner does not, however, persuasively dispute that use of main amplifiers with global read data lines was a known configuration or that implementation of such a configuration would have been within the abilities of a person of ordinary skill in the art. Reply 28–29. Instead, Kawasumi, for example, teaches that its arrangement of local sense amplifiers 1 providing data to the data bus 2 is a workable configuration. Ex. 1010, 1:49–63. Although Kawasumi teaches that this configuration may” slip op. at 32

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

    “Petitioner argues that a person having ordinary skill in the art would have modified McClure’s memory core “such that each sense amplifier 602 is coupled to a pair of global read data lines as taught by Winograd, Merritt, Issa, and Kawasumi.” Pet. 66. The preponderance of the evidence supports this position at least as to Merritt, Issa, and Kawasumi. Petitioner’s declarant, Dr. Chmelar, states that a person of skill in the art would have modified McClure to “reduce power consumption, circuit areas, and/or readaccess time because the plurality of global data bus drivers 606 . . . could be eliminated.” Ex. 1003 ¶ 215. Dr. Chmelar’s testimony on this point is credible and well-supported by the evidence. As explained above, Merritt, Issa, and Kawasumi all teach local amplifiers coupled to global read data lines, and a person of skill in the art would have recognized the advantages of the global read data line configuration by studying those references. Petitioner’s position is further supported by the ’429 patent which admits that a structure of local amplifiers connected to global read data lines was known prior art. In particular, Figure 1 of the ’429 patent illustrates “conventional solution” prior art having local amplifiers 22, 24, and 26 connected to global read data lines 38 and 40. Ex. 1001, Fig. 1, 1:26–48 (“The local amplifiers 22, 24, 26 then drive the gdrd (global read data) lines 38, 40.”); see also Pet 8–9 (mapping claim elements to Figure 1). Patent Owner argues that Petitioner does not establish reason to combine the references’ teachings. Resp. 60–62. We disagree for the reasons explained above. The record as a whole, even if the ’429 patent’s disclosure were not considered, supports by a preponderance of the evidence that connecting local amplifiers to global read data lines was a well-known configuration. See supra 27–32. Connecting McClure’s local amplifiers to global read data lines is no more than use of a known method to yield predictable results. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007).” slip op. at 32

  Patent outcomesUS 7,158,429 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,158,429
• Scentair Technologies, LLC v. Prolitec, Inc.Some claims unpatentable
  PTAB · Apr 22, 2022 · IPR2021-00014 · APJ Brian D Range · IPR · Final written decision

  Claims 1–6, 8–14, 21, 24, and 25 are unpatentable as obvious; claims 7, 15–20, 22, and 23 were not shown unpatentable.

  RulingsFinal written decision

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

    “We determine that “toward” in the context of these claims means “in the direction of.” This definition is consistent with the ordinary dictionary definition that Patent Owner advances. Resp. 10; Ex. 2003, 3 (ordinary dictionary defining toward as “in the direction of” or, alternatively, as “along a course leading to”). Patent Owner argues that the ’976 patent describes embodiments supporting Patent Owner’s construction of “toward,” but directs us to no disclosure that requires “aiming.” To the contrary, the ’976 patent suggests that liquid moves “toward” something such as an end point so long as it advances along a path leading to the end point. Reply 1–4 (Petitioner collecting examples). For example, ’976 patent Figures 5 and 6 illustrate fluid taking a spiral flow pattern to outlet zone 174. The specification explains that the liquid takes a “curvilinear path . . . as it moves from the inlet 172 toward the outlet zone 174.” Ex. 1001, 10:50–55; see also Ex. 1015 ¶¶ 8–16 (Dr. Morse providing testimony regarding this and other ’976 patent embodiments). Thus, contrary to Patent Owner’s position, the specification uses the word “toward” to describe liquid that moves in the direction of the outlet––without reference to aiming––and even where the liquid’s movement encounters obstacles or otherwise fails to travel in a straight line to the outlet. We agree with Petitioner that “‘aimed’ is found nowhere in the intrinsic evidence and is contrary to the specification” of the ’976 patent. Reply 1. Further, Patent Owner’s own extrinsic evidence does not include the word “aimed” in the definition of “toward.” Ex. 2003, 3. Against that backdrop, for reasons stated above, we determine that “toward” in the context of the challenged claims means “in the direction of.”” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “least three years of experience working with, designing, or studying liquid diffusion devices or similar devices.” Pet. 14; Ex. 1003 ¶ 13. Patent Owner does not dispute that definition or advance an alternative definition. The prior art asserted in the Petition appears, on this record, as representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). To the extent a more specific definition is required, we adopt Petitioner’s unopposed definition (Pet. 16) because it is consistent with the disclosures of the ’976 patent and the prior art references that form the basis for Petitioner’s challenges. See, e.g., Ex. 1001, 1:7–43 (abstract and overview of technical field of invention of the ’976 patent); Ex. 1004, code (57), ¶ 3 (abstract and background of Rosener’s invention); Ex. 1005, code (57), 1:1–13:12 (abstract and background of Rubin’s invention).” slip op. at 9

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

    “Based on the record before us, the preponderance of the evidence supports Petitioner’s position. King is concerned with delivering small particles to a patient: King states, for example, that an object of its invention is to “deliver to the patient essentially the same particle size distribution of the aerosol mist that originates from the nebulizer itself.” Ex. 1006 2:19–22; see also id. at [57] (stating that its apparatus delivers medication “in essentially the same particle size distribution of the aerosol mist”); 1:7–10 (stating that invention “delivers a mist of properly sized aerosol particles”); 1:60–65 (stating that invention “functions in a manner to assure that the medicament particles delivered to the patient will be of optimum size”). King states that in “this latest form of the invention this important baffle means comprises a generally spiral-shaped wall 100 (Fig. 20).” Id. at 6:20– 22. A person of ordinary skill in the art would have understood that design of the passage, through which aerosolized particles pass, will affect the size of output particles. Ex. 1003 ¶ 60; Ex. 1004 ¶ 27 (teaching that, for example, “tight bends” may be use to separate small airborne particles from big particles). We find that a person of ordinary skill in the art would have recognized that the spiral structure of King’s passage is an example of a “tight bend” (as referenced by Rosener) that can help control what size of particle progresses through the entire passage. Ex. 1006 6:16–22 (explaining that “this important baffle means comprises a generally spiral-shaped wall 100” and serves to “provid[e] a circuitous fluid flow path through the first chamber”)8; Ex. 1003 ¶¶ 56–61. A person of ordinary skill in the art’s use of a spiral structure, as taught by King, to further control particle size via tight bends, as taught by Rosener, would have been obvious because it would have been a “predictable use of a prior art elements according to their established function.” KSR Int’l, Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Rather than a spiral disrupting Rosener’s separation as Patent Owner argues, the combined teachings of Rosener and King suggest that King’s spiral would assist in achieving separation and particle size control (as Rosener and King teach). Dr. Morse’s testimony is credible in this regard and supports our findings and conclusion along with the references themselves. Ex. 1003 ¶¶ 54–56. Thus, for the reasons explained above, Petitioner has established by a preponderance of the evidence that the subject matter of claims 2 and 11 of the ’976 patent would have been obvious over Rosener in view of King.” slip op. at 24

  • BurdenNot shown unpatentable

    “Ultimately, to determine whether Rosener’s suggested tortuous passage is a structure capable performing the functionality of claims 7 and 16, we would need to determine that, because of Rosener’s tortuous passage, liquid would take more time to leak when the device is upended than if the tortuous passage was not present. The record before us, however, does not adequately support such a finding. Here again, the paucity of information provided by Petitioner, who bears the burden of showing unpatentability, tips against a conclusion that these claims are proven unpatentable. Although tight bends and corners might make the flow take longer to leak from the cartridge (as Petitioner urges at Reply 4–6), Petitioner does not establish that this is the case and, moreover, does not establish that it is not the case that the tight bends and corners might make the liquid take less time to leak from the cartridge. As Patent Owner argues, where a channel narrows in a direction of flow, a fluid’s speed may increase in accordance with Bernoulli’s principle. Sur-Reply 7–8.10 This principle is evidenced by the Svoboda reference, which explains that gas will travel faster through the “necked down portion 29” of its venturi tube. Ex. 1008, 4:4–8, Fig. 1, 2 (illustrating necked down portion 29). Accordingly, the record is unclear as to whether the tight bends and corners would speed up or slow down the flow of liquid from the cartridge. Additionally, Rosener does not refer to its tortuous passage as preventing leaking, and if the tortuous passage were capable of doing so, it is unclear why the valve would be necessary. See 10 The record also lacks evidence regarding to what extent other factors such as fluid viscosity, pressure differentials, and friction losses could potentially also affect flow speed. This lack of evidence, again, underscores Petitioner’s failure to meet its burden to show unpatentability of these claims. generally Ex. 1004; see also Ex. 2005 ¶ 68 (Dr. Mello’s written testimony on point). In any event, for reasons explained by Patent Owner, Petitioner’s analysis regarding the path and speed of liquid flow when Rosener’s device is upended is insufficient to support the unpatentability of claims 7 and 16 (Sur-Reply 1–18), at least because Petitioner fails to take account of leakage through orifice 401 or because of Rosener’s express need for a valve to provide for a device that “may be inverted without causing the fragrance oil to pour out” (id. at 12). See Ex. 1004 Fig. 2D (illustrating position of orifice 401), ¶ 33 (describing Rosener’s valve); see also Resp. 11–17 (Patent Owner’s arguments); Pet. 29–30, 33; Reply 4–6 (Petitioner’s analysis).” slip op. at 37

  Patent outcomesUS 9,745,976 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,745,976
• Scentair Technologies, LLC v. Prolitec, Inc.Some claims unpatentable
  PTAB · Apr 22, 2022 · IPR2021-00012 · APJ Grace Karaffa Obermann · IPR · Final written decision

  Claims 5, 6, 8–10, 13–16, 18, and 22 are unpatentable as obvious; the Board did not find claims 1–4, 7, 11, 12, 17, 19–21, 23, and 24 unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “factual determination that provides a primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). Petitioner asserts that a person of ordinary skill in the art “would typically have a bachelor’s degree in mechanical or chemical engineering as well as at least three years of experience working with, designing, or studying liquid diffusion devices or similar devices.” Pet. 16; Ex. 1003 ¶ 13. Patent Owner does not dispute that definition or advance an alternative definition. See Resp. 79 (repeating Petitioner’s definition). The prior art asserted in the Petition, on this record, is representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). To the extent a more specific definition is required, we adopt Petitioner’s unopposed definition (Pet. 16) because it is consistent with the disclosures of the ’004 patent and the prior art references that form the basis for Petitioner’s challenges. See, e.g., Ex. 1001, 1:7–43 (abstract and overview of technical field of invention of the ’004 patent); Ex. 1004, code (57), ¶ 3 (abstract and background of Rosener’s invention); Ex. 1005, code (57), 1:1–13:12 (abstract and background of Rubin’s invention).” slip op. at 8

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

    “We determine that “toward” in the context of these claims means “in the direction of.” Ex. 2003, 3. That definition is consistent with the dictionary definition advanced by Patent Owner. Resp. 7–11; Ex. 2003, 3 (ordinary dictionary defining toward as “in the direction of” or, alternatively, as “along a course leading to”). Patent Owner argues that the ’004 patent describes embodiments supporting Patent Owner’s construction of “toward,” but directs us to no disclosure that requires “aiming.” Id. To the contrary, the ’004 patent suggests that liquid moves “toward” something, such as an end point, so long as it advances along a path leading to the end point. Reply 1–4 (Petitioner collecting examples). For example, in the ’004 patent, Figures 5 and 6 illustrate fluid taking a spiral flow pattern to outlet zone 174. The specification explains that the liquid takes a “curvilinear path . . . as it moves from the inlet 172 toward the outlet zone 174.” Ex. 1001, 10:34–36; see Ex. 1015 ¶¶ 8–16 (Dr. Morse providing testimony regarding this and other ’004 patent embodiments). Thus, contrary to Patent Owner’s position, the specification uses the word “toward” to describe liquid that moves in the direction of the outlet––without reference to aiming––and even where the liquid’s movement encounters obstacles or otherwise fails to travel in a straight line to the outlet. We agree with Petitioner that “‘aimed’ is found nowhere in the intrinsic evidence and is contrary to the specification” of the ’004 patent. Reply 1. Further, Patent Owner’s own extrinsic evidence does not include the word “aimed” in the definition of “toward.” Ex. 2003, 3. Against that backdrop, for reasons stated above, we determine that “toward” in the context of the challenged claims means “in the direction of.”” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We recognize, in that regard, that a witness “must at minimum possess ordinary skill in the art” in order to opine about the level of skill in the art. Kyocera Secco Indus. Tools Inc. v. ITC, 22 F.4th 1369, 1377 (Fed. Cir. 2022). Dr. Morse has at least the qualifications of an ordinarily skilled artisan and is qualified to provide opinions as to what an ordinarily skilled artisan would have understood as of April 22, 2014. Based on Dr. Morse’s statement of qualifications and curriculum vitae, as well as his stated familiarity with the state of the prior art at the time of the invention, we find Petitioner has shown by a preponderance of the evidence that Dr. Morse is qualified to provide opinions keyed to the level of ordinary skill in the art at the time of the invention. Ex. 1003 ¶¶ 2–5, 9, 11, App’x pp. 69–73. In any event, to the extent we agree that Petitioner establishes unpatentability as explained above, the prior art references themselves are adequate for Petitioner’s showing of unpatentability even if we were to provide little or no weight to Dr. Morse’s testimony.” slip op. at 61

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

    “It is not clear, on this record, that guiding surfaces 10 are formed as spirals, as opposed to flat surfaces arranged to “project” and “extend[]” into the atomizing space in a helical pattern. Id.; see Resp. 37–38. Nor is it clear, on this record, how guiding surfaces 10 relate, if at all, to the formation of the transient airflow path defined by the “spiral vortex” described in Knoch, which forms only during normal operation of the device. Id. Knoch indicates that the spiral vortex is formed as a result of the placement and orientation of openings 2 and 3, and that “homogenization” of the aerosolized particles occurs, not via impaction with guiding surfaces 10, but rather, as a result of particles traveling a transient airflow path defined by the spiral vortex. Ex. 1006, Figs. 1, 2, 2:48–61, 3:10–4:25, 5:14–38, 5:56–63; see Pet. 31–32 (relying on “homogenization” that occurs when “vaporized liquid” traverses a transient airflow path defined by the “spiral vortex” in Knoch’s device) (quoting Ex. 1006, 3:26–29 5:28–32); see supra 44 n.13. To be clear, Knoch’s spiral vortex is a transient path of airflow that forms only during normal operation of the device, and Petitioner directs us to no persuasive information that Rosener employs any comparable approach “to perform the same functions within the same general structure.” Pet. 24. The lack of analysis provided in the Petition on that key point undermines this challenge. Id. at 23–25, 31–32; Reply 9–10 (totality of Petitioner’s information on that point); see supra 44 n.13. Even if we set aside that problem, however, we find, in the alternative, that Petitioner fails to explain adequately how or why Knoch would have suggested a tortuous passage (as opposed to a transient airflow path) that spirals between the inlet and outlet zone of Rosener’s insert. Without adequate analysis, Petitioner merely refers us to Figure 2E of Rosener, which shows a tortuous passage extending from inlet 401 to outlet zone 240, then directs us to guiding surfaces 10 illustrated in Knoch’s Figure 1. Pet. 31–32. The paucity of analysis provided in the Petition, particularly on the question of where, how, and why an ordinarily skilled artisan would have included a spiraling impaction surface extending from Rosener’s inlet 401 to outlet zone 240 in view of Knoch, persuades us that the proposed modification is driven, not by any suggestion in the prior art, but rather, by an impermissible hindsight reconstruction of the claimed invention. Id.; see Resp. 27–39 (Patent Owner’s arguments on that point). Petitioner does not establish that Knoch teaches a spiraling” slip op. at 45

  Patent outcomesUS 9,162,004 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,162,004
• Zillow Group, Inc. / Zillow, Inc. et al. v. International Business Machines Corp.Some claims unpatentable
  PTAB · Mar 3, 2022 · IPR2021-00757 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 1–3 are unpatentable as anticipated by Linden; Petitioner did not show claims 4–7, 9–17, 19, and 20 unpatentable on the asserted anticipation grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a skilled artisan “would have possessed at least three years of experience in the field of information systems, e-commerce, or Internet marketing,” and “would have had a working knowledge about how to create useful software programs, including familiarity with network database systems.” Pet. 9 (citing Ex. 1005 ¶¶ 18, 21) (Hochman Decl.). Patent Owner agrees with Petitioner’s definition of the level of ordinary skill in the art. PO Resp. 10 We adopt Petitioner’s proposed level of ordinary skill in the art because it appears consistent with the problems addressed in the ’443 patent and the prior art of record.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther

    “Petitioner contends that it “analyzed the claims using their plain and ordinary meaning.” Pet. 9. As a result, Petitioner contends that we “need not explicitly construe the terms here.” Id. Patent Owner adopts our “application of the plain and ordinary meaning to the claim terms.” PO Resp. 10. Because there is no dispute that the claims should be analyzed using the plain and ordinary meaning thereof, we apply the plain and ordinary meaning. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1015 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 7

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Petitioner must show that Bull searches a repository using at least one search result item identified in step 1[a]. For the search result item in step 1[a], Petitioner relies on Bull’s disclosure of a list of data sources located by a search of DataStore 220 disclosed at column 9, lines 11 to 15. See Pet. 50. DataStore 220 contains an index of “[a] theme or definition of a class of information (e.g., central California travel and tourism or new automobiles)” screened for relevance, quality of information and appropriateness. Ex. 1004, 7:10–14. For step 1[b], Petitioner refers to column 4 lines 27–37 where Bull discloses using, inter alia, a user’s looking pattern to search for associated product advertisements. Petitioner relies on Mr. Hochman’s testimony that the user’s looking pattern “may include what the user looked at on the search results page and the content of any search results page selected, and does not consist merely of the search terms used to obtain them.” Pet. 52 (citing Ex. 1005 ¶ 213). The question raised by Patent Owner, based on Dr. Schmidt’s testimony, is whether a skilled artisan would understand that Bull’s user’s looking pattern encompasses the results of a search. See Ex. 2003 ¶ 213 (“The Petition does not explain how a ‘user’s looking pattern’ means ‘search result items.’”); Ex. 1015 274:1–275:3. Mr. Hochman does not cite to any part of Bull to support his testimony that the user’s looking pattern encompasses search result items. See Ex. 1005 ¶ 213. In the Petitioner Reply, Petitioner points to several portions of Bull to support its contention that the user’s looking pattern comprises many things. Pet. Reply 15. The first two citations describe prior art patents not Bull’s system and, thus, are of limited relevance to the scope of Bull’s user looking patterns. Ex. 1004, 2:38–41, 3:1. The citations to column 4 lines 10–11 and 21–22 of Bull relate to information provided to the user but do not specifically address user looking patterns. The final citation to column 5 lines 61–63 is parsed out of context by Petitioner and relates to user queries “unmet” when content is retrieved. In any event, none of the citations to Bull provided by Petitioner in the Reply are directly related to the scope of Bull’s user looking patterns and do not support Petitioner’s argument concerning the scope of Bull’s user looking patterns. Our own review of Bull discloses that Bull specifically describes user” slip op. at 46

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

    “A claim is anticipated under 35 U.S.C. § 102 “only if each and every element as set forth in the claims is found either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). However, this is not an ipsissimis verbis test, i.e., identity of terminology is not required. See In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). We analyze the asserted grounds based on anticipation in accordance with the above-stated principles.” slip op. at 6

  Patent outcomesUS 7,076,443 mixed
  Claim construction§ 102 anticipation
  Patents in suitUS 7,076,443
• Zillow Group, Inc. / Zillow, Inc. et al. v. International Business Machines Corp.Some claims unpatentable
  PTAB · Mar 3, 2022 · IPR2020-01655 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 1–3 are unpatentable as anticipated by Linden; Petitioner did not show claims 4–7, 9–17, 19, and 20 unpatentable on the asserted anticipation grounds.

  RulingsFinal written decision

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

    “1 Chewy, Inc. filed a Petition seeking review of the same claims challenged in Zillow’s Petition and also a Motion for Joinder with this proceeding. Paper 25, 2. We granted Chewy Inc.’s Petition and Motion for Joinder. Id. at 25.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner agrees with Petitioner’s definition of the level of ordinary skill in the art. PO Resp. 10 We adopt Petitioner’s proposed level of ordinary skill in the art because it appears consistent with the problems addressed in the ’443 patent and the prior art of record.” slip op. at 7

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

    “Patent Owner adopts our “application of the plain and ordinary meaning to the claim terms.” PO Resp. 10. Because there is no dispute that the claims should be analyzed using the plain and ordinary meaning thereof, we apply the plain and ordinary meaning. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1015 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 7

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

    “disclose this limitation, i.e., Linden does not perform word matching, is likewise unavailing because it is premised on an ipsissimis verbis test. We turn to Linden’s disclosure relied on by Petitioner. Linden discloses that “[t]he similar items table 60 could also reflect non-collaborative type item similarities including content-based similarities derived by comparing item contents or descriptions.” Ex. 1003, 9:12–15 (emphasis added). Linden also discloses “if the user is currently searching for books on a particular topic and has added several such books to the shopping cart, this method will more likely produce other books that involve the same or similar topics.” Id. at 3:52–55 (emphasis added). Linden also discloses “the current and/or past contents of a shopping cart can be used to generate recommendations in a system in which mappings of items to lists of similar items are generated from a computer-based comparison of item contents.” Id. at 16:52–56. Linden, thus, explicitly discloses generating recommendations by comparing item contents or descriptions and provides a specific example of matching books involving the same or similar topics. We find this disclosure corresponds to the requirement of step 1[c] of “identifying . . . at least one advertisement . . . having at least one word that matches said . . . search result item.” After considering the evidence cited by Petitioner in light of Patent Owner’s contentions, we find Petitioner establishes that Linden discloses this limitation.” slip op. at 17

  Patent outcomesUS 7,076,443 mixed
  Claim construction§ 102 anticipation
  Patents in suitUS 7,076,443
• Bestway (USA), Inc. v. Intex Marketing Ltd.Some claims unpatentable
  PTAB · Feb 2, 2022 · IPR2020-01405 · APJ Ken B Barrett · IPR · Final written decision

  Claims 1–4 and 6–10 are unpatentable under the stated obviousness grounds; claim 5 was not shown unpatable over either ground asserted against it.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 6 (citing Ex. 1002 ¶ 28). Patent Owner, for purposes of this proceeding, agrees with Petitioner’s description of the level of ordinary skill in the art. PO Resp. 11. Petitioner’s description is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 11

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

    “Both parties assert that no claim term requires express construction. See Pet. 6; PO Resp. 11–12. On this record, we determine that no claim terms require express construction. We discuss below, in the analysis of Petitioner’s challenge to claim 5, the parties’ positions on the construction of “fixed to.”” slip op. at 11

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

    “We find that a person of ordinary skill in the art of inflatable products would have been aware that square mesh was a known option for use in a tensioning structure and that square mesh possessed certain advantages even if it also had some disadvantages, that a person of ordinary skill in the art would have been motivated to use Fireman’s mesh in Hanlie’s product, and that the substitution of Fireman’s square mesh for the mesh of Hanlie’s strap would have yielded predictable results. Accordingly, Patent Owner’s arguments regarding the availability of other known and purportedly more preferred options is not persuasive.” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundDecided for petitioner

    “the use of square mesh rather than the several other known configurations, is plucking Fireman out of the sea of prior art and, therefore, engaging in improper hindsight. See PO Resp. 17–18, 54 (citing WBIP, LLC v. Kohler familiar with both Hanlie and Fireman. Tr. 30:22–31:6; cf. Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986) (“The person of ordinary skill is a hypothetical person who is presumed to be aware of all the pertinent prior art.”). Co., 829 F.3d 1317, 1338 (Fed. Cir. 2016)); PO Sur-reply 2–4. Patent Owner’s reliance on WBIP is misplaced. When read in context, the court in WBIP was referring to the specific facts of that case. See WBIP, 829 F.3d at 1337 (“The real question is whether that skilled artisan would have plucked one reference out of the sea of prior art (Phipps) and combined it with conventional coolant elements to address some need present in the field (the need for low–carbon monoxide emission marine gen-sets). . . . This is part of the fact question . . . .”). WBIP did not, as Patent Owner’s arguments imply, create a per se rule that the existence of several known alternatives renders non-obvious a claim covering one of those alternatives. In the case before us, it is not as if some obscure option was plucked out a sea of alternatives. Rather, square mesh was a well-known option and was used in inflatable products.” slip op. at 22

  Patent outcomesUS 9,901,186 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,901,186
• Bestway (USA), Inc. v. Intex Marketing Ltd.Some claims unpatentable
  PTAB · Feb 2, 2022 · IPR2020-01416 · APJ Ken B Barrett · IPR · Final written decision

  Claims 1, 2, 4–12, 14–16, 19, 24, 26, and 28–30 are unpatentable under §103; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • ExcludeOther

    “Petitioner moves to strike Exhibits 2100, 2101, and 2103, the testimony regarding these exhibits (Ex. 2104, 124:17–132:5; Ex. 2105, 229:18–234:9; Ex. 2106, 18:8–31:7), and portions of Patent Owner’s Sur-reply regarding these exhibits (Paper 43, 13 n.5 and 14 referencing Exhibits 2100, 2101, and 1007, and the sentence on pages 25–26 referencing Exhibit 2103). Paper 48, 1. Petitioner argues these exhibits and the portions of the Sur-reply that reference those exhibits are improper because a patent owner sur-reply may not include new evidence other than deposition transcripts of any reply witness. Id. We do not rely on these exhibits. Accordingly, we dismiss as moot both Motions to Strike.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 6 (citing Ex. 1002 ¶ 28). Patent Owner, for purposes of this proceeding, agrees with Petitioner’s description of the level of ordinary skill in the art. PO Resp. 8. Petitioner’s description is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 12

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

    “Both parties assert that no claim term requires express construction. See Pet. 6; PO Resp. 8–9. On this record, we determine that no claim terms require express construction. We discuss below, in the analysis of Petitioner’s challenge to claim 17, the parties’ positions on the construction of “full surface-area contact in spaces between the plurality of strands.”” slip op. at 12

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “We find Dr. Abraham’s testimony to be more credible than Dr. Schroeder’s. Both experts agree that welding was a well-known joining method in the art of inflatable products. Ex. 1002 ¶ 40; Ex. 1038, 115:22– 116:5. Dr. Abraham testifies as to how a person of ordinary skill in the art, having that knowledge, would read Hanlie’s disclosure of attaching internal straps to the top and bottom of an air mattress. See Ex. 1002 ¶¶ 40, 222; Ex. 1040 ¶ 30. Dr. Schroeder, on the other hand, testifies more generally, opining that an ordinary artisan would know that “‘fused’ encompasses many applications other than thermoplastic welding” (Ex. 2016 ¶ 128), but does not credibly address with any specificity how the ordinary artisan would understand the term “fused” in the context of Hanlie’s overall disclosure. See id. ¶¶ 127–130. We find that Hanlie discloses or at least suggests to a person of” slip op. at 46

  Patent outcomesUS 10,165,869 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,165,869
• NXP USA, Inc. v. Impinj, Inc.Some claims unpatentable
  PTAB · Dec 13, 2021 · IPR2020-01063 · APJ Ken B Barrett · IPR · Final written decision

  Claims 1, 3–6, 8, 19, and 20 are unpatentable under §103; claims 2, 7, and 9 were not shown unpatentable because the proposed combinations were inadequately supported.

  RulingsFinal written decision

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

    “Importantly, the Specification states that “[t]he [backscattered] combination is a code that is made from at least a portion of the first code, a portion of the second code, and in some embodiments include even more codes.” Id. at 14:34–37. Thus, the Specification makes clear that something labeled a “code” can consist of a plurality of data items also each labeled as a “code.” Mr. Fischer testifies, consistent with this, that “a code may comprise codes,” and explains, as an example, “an EPC code may comprise a company prefix code, an object class code, and a serial number code.” Ex. 1030 ¶ 2018; see Pet. Reply 1 (citing the same).” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Ex. 1003 ¶¶ 78–79; see Pet. 13. Patent Owner does not propose a different definition. See PO Resp. 12 (“While Patent Owner does not necessarily agree with this definition, it will accept Petitioner’s definition for the purpose of this response.”). Patent Owner’s expert, Dr. Durgin, for purposes of his opinion testimony, adopts Mr. Fischer’s definition. Ex. 2001 ¶ 24. We determine that the definition offered by Mr. Fischer comports with the technical level of the ’431 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may reflect an appropriate level of skill in the art). We apply Mr. Fischer’s description of the person of ordinary skill in the art.” slip op. at 12

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Other

    “We agree that the Graham factors must be considered in an obviousness analysis, but we do not agree that the law requires the rigid application of Graham v Deere for which Patent Owner impliedly advocates. We do consider all of the Graham factors in our analysis, which is what Graham v. Deere and KSR require. Further, Patent Owner’s contention, at its core, is that Petitioner’s arguments and evidence are not persuasive. See PO Resp. 29 (“In the instant case, Petitioner has failed to provide persuasive evidence or argument concerning what differences exist between Schuessler and the claimed invention, what modification of Schuessler Petitioner proposes, and why the proposed modification would have been obvious.” (emphasis added; Patent Owner’s italicizing omitted)). We acknowledge that the Petition does, as Patent Owner notes (PO Resp. 29–30), assert that both Schuessler and Gen2 disclose or teach certain limitations. However, Petitioner’s articulated challenges explicitly or impliedly address the underlying factual matters identified in Graham adequately and clearly enough for an analysis of those challenges to be conducted and for Patent Owner to respond, as it has.” slip op. at 22

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

    “Patent Owner’s arguments are unavailing. The applicant’s disclosure of Bailey to the examiner does not negate the applicability of its teachings in this proceeding. We find the Petitioner’s recitation of the benefits of encryption to constitute an adequate and persuasive reason why a person of ordinary skill in the art would be motivated to combine Bailey with Schuessler and Gen2. Bailey identified a problem to be solved by its teachings—“EPC tags are vulnerable to counterfeiting or other types of cloning attacks.” Ex. 1023 ¶ 7. Mr. Fischer credibly and persuasively testifies regarding “the well-known problems associated with skimming and cloned tags” and that persons of ordinary skill in the art “viewed ‘[m]itigating the risk of tag cloning [as] an essential security goal in an RFID system.’” Ex. 1003 ¶¶ 246–249 (quoting Ex. 1024, 4). In contrast, Dr. Durgin applies an inappropriately rigid and narrow analysis, unpersuasively opining, for example, that there is nothing about Schuessler’s payload-length problem “that would lead a person of ordinary skill in the art to look to Bailey to fix deficiencies in Schuessler.” Ex. 2001 ¶ 106.” slip op. at 39

  Patent outcomesUS 8,390,431 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,390,431
• Cooler Masters Co., Ltd. v. Aavid Thermalloy LLCSome claims unpatentable
  PTAB · Jun 4, 2020 · IPR2019-00337 · APJ Linda E Horner · IPR · Final written decision

  Claims 9, 10, and 13 were held unpatentable as obvious; claims 11 and 12 were not shown unpatentable.

  RulingsFinal written decision

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

    “The existence of a published abstract that would have allowed one skilled in the art exercising reasonable diligence to locate the foreign patent application and the fact that the application was classified and indexed in the patent office, were central to the Wyer court’s conclusion that the application was “publicly accessible.”” slip op. at 35

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

    “inherency, then the assertions of obviousness are mere conclusory statements. We are unable to recognize any proffered reasoning underlying the assertions of obviousness. “[Challenges] on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). As yet another possible alternative, Petitioner may be basing its case on improper hindsight by relying on and quoting the Specification of the ’240 patent in its obviousness analysis. See Pet. 27. That, too, is unpersuasive. Regardless as to its theory of the case, we determine that Petitioner has failed to explain sufficiently why the claimed heat pipe having a configuration of two plates having bonded together circumferential edge lips would have been obvious. Accordingly, Petitioner has not shown by a preponderance of the evidence that claim 12 is unpatentable over Morikawa alone.” slip op. at 55

  • ExcludeMotion to exclude, deniedMixed

    “as not relevant under FRE 104 on the grounds that Petitioner failed “to introduce sufficient proof that Exhibit 1004 was publicly accessible such that it qualifies as a prior art printed publication under United States law.” Paper 46, 3; see also id. at 4 (citing Fed. R. Evid. 104, 401). As set forth in section II.D, above, the evidence of record leads us to an entirely different conclusion regarding Nakamura’s prior art status. Because Petitioner persuades us that Nakamura qualifies as a prior art printed publication as of the earliest possible effective filing date of the challenged claims of the ’240 patent, we deny Patent Owner’s request on its merits.” slip op. at 82

  Patent outcomesUS 7,066,240 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,066,240

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.