• C.R. Bard, Inc. v. Medline Industries, Inc.Some claims unpatentable
  PTAB · Nov 23, 2022 · IPR2019-00035 · APJ Mitchell G Weatherly · IPR · Remand

  Claims 1, 2, 6, 8–10, 16, 25–27, 29–37, and 39–44 are unpatentable as obvious; claims 7, 17–19, 28, and 38 were not shown unpatentable.

  In the decision

  …syringes at different heights according to order of use.” Id. at *7. Thus, the Federal Circuit has found in Petitioner’s favor that the combined teachings of Solazzo and Serany suggest limitations 1e and 1g. The Federal Circuit vacated our conclusion that claim 1 remained patentable and…

  RulingsRemand decision

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner

    “IPR2019-00208 and this proceeding do not involve an “identical issue” despite Patent Owner relying on essentially the same body of objective evidence of nonobviousness in both proceedings. The challenged claims in this proceeding materially differ from those at issue in IPR2019- 00208. Compare Ex. 1001, 27:47–30:57, with IPR2019-00208, Ex. 1001, 11:47–12:28; see also PO Remand Br. 23. The material differences in the claims, alone, and thus the issues previously decided, precludes a finding of collateral estoppel. Therefore, we conclude that Patent Owner is not collaterally estopped from relying upon its objective evidence of nonobviousness. Rather, we consider and weigh that evidence as it applies to the claims at issue in this proceeding below.” slip op. at 54

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

    “However, we disagree with Patent Owner’s interpretation of limitation 1a as requiring that the compartment for receiving the medical assembly be “distinct” from the first compartment or that the medical assembly be disposed within the “compartment” of limitation 1a. Limitation 1f requires “at least two compartments,” but expressly recites a functional limitation for only “a first compartment” among the “at least two compartments.” Ex. 1001, 27:60–62. Claim 1 does not further limit the unspecified compartment among the “at least two compartments” or specify what items, if any, are placed within it. See id. at 27:47–67. Two unchallenged dependent claims, claims 4 and 11, further recite that “the at least two compartments” further comprise “a second compartment.” Claim 4 depends directly from claim 1 and further recites, in pertinent part: “the at least two compartments further comprising a second compartment separated from the first compartment by a wall with an opening, further comprising a catheter assembly disposed within the second compartment, the catheter assembly comprising a fluid bag.” Id. at 28:21–25 (emphasis added). Claim 11 depends from claim 10, which depends from claim 1, and similarly recites: “the at least two compartments further comprising a second compartment separated from the first compartment by a wall with an opening, further comprising a catheter assembly disposed within the second compartment.” Id. at 28:47–51 (emphasis added).” slip op. at 18

  • Skill levelSkill level board ownDecided for petitioner

    “skill in the relevant art would have a bachelor’s degree in packaging engineering, mechanical engineering, or industrial design. Pet. 18 (citing Ex. 1002 ¶¶ 14–16); PO Resp. 15 (citing Ex. 2026 ¶ 38). Alternatively, such a person could have an engineering degree in another technical field along with about two years of experience designing medical packaging. Pet. 18 (citing Ex. 1002 ¶¶ 14–16); PO Resp. 15 (citing Ex. 2026 ¶ 38). Neither party contends that a person of ordinary skill needs to be a medical practitioner, but both parties agree that the person of ordinary skill would consult with medical practitioners familiar with catheterization procedures. Pet. 18; PO Resp. 15 (citing Ex. 2027 ¶ 78). Slight differences exist in the formulation of the level of ordinary skill between the parties. We, however, discern no meaningful difference because none of those differences would affect the outcome of our analysis. Accordingly, we apply the level of skill set forth in the preceding paragraph.” slip op. at 10

  • Expert testimonyPatent owner expert creditedPetitioner expert creditedMixed

    “Petitioner argues that shallow area 11B “facilitates easy lubrication of the catheter” simply because it is shallow and “it was well-known to ‘(a) apply lubricant directly on the catheter; and (b) use the same compartment where lubricant is stored to lubricate the catheter.’” Pet. Remand Br. 28–29 (citing Pet. 32, 34; Ex. 1002 ¶ 231). Patent Owner persuasively responds, however, that a practitioner would not use the same compartment to collect urine and lubricate the catheter because the lubricant would contaminate the urine specimen collected in the compartment. PO Remand Br. 3–4 (citing PO Resp. 36; Op. *8); see also Ex. 2027 ¶ 175 (Ms. Chiappetta testifying that “lubrication in the portion of the tray that collects urine will contaminate the urine,” which would invalidate any testing of the patient’s urine). Although it may be easier to lubricate a catheter in shallow area 11B than in deep area 11A, we find that Solazzo’s shallow area 11B is not well-suited, configured, or intended for lubricating a catheter; rather, Solazzo recommends using lubricating wells 31 and 33 for that purpose. We credit Ms. Chiappetta’s supporting testimony to that effect. See Ex. 2027 ¶ 175. Accordingly, we conclude that Petitioner has failed to prove by a preponderance of evidence that the combined teachings of Solazzo and Serany render claim 7 unpatentable as obvious.” slip op. at 31

  Patent outcomesUS 9,745,088 mixed
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 9,745,088
• Apple Inc. v. Personalized Media Communications LLCSome claims unpatentable
  PTAB · Sep 8, 2022 · IPR2016-01520 · APJ Kevin F Turner · IPR · Remand

  On remand, claims 4, 7, 13, 18, 20, 21, 28–30, 32, and 33 were held unpatentable; claim 3 was not shown unpatentable, and the contingent motions to amend remained denied.

  In the decision

  …seeking to establish obviousness based on more than one reference also must articulate sufficient reasoning with rational underpinnings to combine teachings. See KSR, 550 U.S. at 418. B. Level of Ordinary Skill in the Art According to Petitioner’s Declarant, Mr. Wechselberger, a person of…

  RulingsRemand decision

  • RemandOther

    “CONCLUSION After reviewing the record developed during trial anew and taking into account the Federal Circuit’s decision, we are persuaded that Petitioner has demonstrated by a preponderance of the evidence that claims 4, 7, 13, 18, 20, 21, 28–30, 32, and 33 of the ’635 Patent are unpatentable, and that Petitioner has not demonstrated by a preponderance of the evidence that claim 3 of the ’635 Patent is unpatentable.” slip op. at 103

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

    “in the art would have understood “encrypted video” recited in claim 4 to exclude teletext and would recognize “video” to be distinct from static text and images. 754-PO Resp. 19. Petitioner counters that “video” is any information that is visually perceivable including the display of static pictures. 754-Pet. Reply 5 (citing IPR2016-00754, Ex. 2028, 10–12; IPR2016-00754, Ex. 1003, 278:21–24, 258:16–19, 13:38–52, 188:17–18, 249:53–56). During oral argument, Petitioner argued that a single image can qualify as video. IPR2016-00754, Paper 40, 14:24–25 (“JUDGE WARD: So one image qualifies as video. MR. SERNEL: I think arguably it would.”). We do not agree with Petitioner’s position that the display of a static image constitutes “video”; otherwise, there would be no difference in an image and video. We determine that video requires moving visuals. In its Preliminary Response, Patent Owner stated that video shows movement and changes within an image. IPR2016-00754, Paper 7, 60 (citing IPR2016- 00754, Ex. 2001 ¶ 122). Petitioner’s Declarant Mr. Wechselberger seems to agree as he describes that “[s]uccessive frames of text and/or graphics presented on the display means 20 constitutes video.” IPR2016-00754, Ex. 1001 ¶ 141. We determine that the construction of the term “video” recited in claim 4 of the ’635 Patent means “visually perceivable non-static imagery.”” slip op. at 44

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

    “teletext in accordance with its well-known capabilities as part of a television program. IPR2016-00754, Ex. 1001 ¶ 201. As the Supreme Court instructed in KSR, it is proper to “consider the inferences and creative steps a person of ordinary skill in the art would employ.” 550 U.S. at 401. Based on the foregoing, we determine Petitioner has provided a sufficient rationale for the modification of Guillou. Id. at 418. Accordingly, we determine the record supports Petitioner’s proposed modification of Guillou such that the encrypted materials comprise a portion of a television program, and we adopt Petitioner’s contentions as our own.” slip op. at 57

  Patent outcomesUS 8,559,635 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,559,635
• Apple Inc. v. Personalized Media Communications LLCSome claims unpatentable
  PTAB · Sep 8, 2022 · IPR2016-00754 · APJ Kevin F Turner · IPR · Remand

  On remand, claims 4, 7, 13, 18, 20, 21, 28–30, 32, and 33 were held unpatentable; claim 3 was not shown unpatentable.

  In the decision

  …seeking to establish obviousness based on more than one reference also must articulate sufficient reasoning with rational underpinnings to combine teachings. See KSR, 550 U.S. at 418. B. Level of Ordinary Skill in the Art According to Petitioner’s Declarant, Mr. Wechselberger, a person of…

  RulingsRemand decision

  • RemandOther

    “D. Scope of Consideration on Remand Per the briefing on remand, Petitioner asserts that the above-discussed” slip op. at 11

  • Adverse judgmentAdverse judgmentOther

    “1 Patent Owner subsequently disclaimed claims 1 and 2 of the ’635 Patent (IPR2016-00754, Ex. 3001), such that we need not consider those claims with respect to the instituted grounds. 2 US Patent No. 4,337,483, filed Jan. 31, 1980 (Ex. 1006) (“Guillou”). 3 US Patent No. 4,388,643, filed Apr. 6, 1981 (Ex. 1008) (“Aminetzah”). 4 US Patent No. 3,743,767, filed Oct. 4, 1971 (Ex. 1009) (“Bitzer”). 5 Under Board practice at the time, not all grounds and claims proffered in the Petition were instituted.” slip op. at 2

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

    “L. Contingent Motions to Amend As discussed above, Patent Owner also filed a Contingent Motion to Amend in each proceeding (IPR2016-00754, Paper 15; IPR2016-01520, Paper 16). In respective Final Written Decisions (754-FWD, 1520-FWD), we denied both contingent motions to amend. See 754-FWD, 64–71; 1520- FWD, 55–66. As neither the Federal Circuit decision in PMC, nor the Order Granting Request for Director Review, addressed the contingent motions to amend, we incorporate-by-reference our prior analyses and continue to deny those motions, save consideration of one claim, discussed below. In both Final Written Decisions, we were not persuaded that Patent Owner had demonstrated that the substitute claims had proper written description support, with the exception of one claim in each Motion to Amend, where those latter, substituted claims were not shown to be patentable over the prior art of record. See 754-FWD, 64–71; 1520-FWD, 55–66. With respect to IPR2016-01520, substitute claim 41, a proposed substitute for challenged claim 3, was shown to have proper written description support. 1520-FWD, 62–63. As discussed above, however, claim 3 has not been demonstrated to be unpatentable, such that proposed, substitute claim 41 need not be considered, based on the contingencies specified in the Contingent Motion to Amend. IPR2016-01520, Paper 16.” slip op. at 101

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art According to Petitioner’s Declarant, Mr. Wechselberger, a person of” slip op. at 15

  Patent outcomesUS 8,559,635 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,559,635
• Proppant Express Investments, LLC / Proppant Express Solutions, LLC v. Oren Technologies, LLCAll claims unpatentable
  PTAB · Jun 6, 2022 · IPR2018-00733 · APJ Kevin W Cherry · IPR · Remand

  On remand, the Board held claims 1, 3, 6–11, 13–19, and 21–23 unpatentable as obvious over the asserted prior-art combinations.

  In the decision

  …by the Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007): Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge…

  RulingsRemand decision

  • Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner

    “it is entitled to a nexus, and, based on the Federal Circuit’s analysis in the - 01918 Proceeding and the analysis in Mr. Hirshfeld’s remand, because the evidence and arguments presented by Petitioner in this case are similar to those found insufficient to rebut the presumption by the Federal Circuit in the -01918 Proceeding. We further find that Petitioner has not rebutted the presumption Accordingly, we address explicitly below Petitioner’s and Patent Owner’s evidence. We begin, however, by reiterating the findings from our Final Written Decision regarding the importance of Patent Owner’s trade secrets in the success of its product. We then address explicitly each piece of evidence that Patent Owner cited in its Response under the heading “Secondary Considerations Demonstrate the Non-Obviousness of the Challenged Claims.” See PO Resp. 57–76.” slip op. at 66

  • ExcludeMotion to exclude, deniedOther

    “FURTHER ORDERED that Petitioner’s Motion to Exclude is dismissed as moot; FURTHER ORDERED that Patent Owner’s Motion to Exclude is dismissed as moot; and” slip op. at 96

  Patent outcomesUS 9,440,785 unpatentable
  § 103 obviousnesscites Phillips · KSR
  Patents in suitUS 9,440,785
• Kranos Corporation v. Riddell, Inc.No claims unpatentable
  PTAB · Jul 11, 2019 · IPR2016-01646 · APJ James J Mayberry · IPR · Remand

  On remand, the Board found claims 1–7, 11, 13, 25–28, 30, 32–37 not shown unpatentable on the added grounds; it also denied Riddell’s motion to exclude as moot.

  In the decision

  …Id. at 33–34. Kranos filed a 20 IPR2016-01646 Patent 8,528,118 C1 Rehearing Request contending that we misapprehended or overlooked Rappleyea’s teachings as to this claim element. See Paper 12, 1–9. We denied the request. Paper 14, 3–10. In its supplemental briefing, Kranos does not further…

  RulingsRemand decision

  • RemandOther

    “motion to terminate the appeal in IPR2016-01646 and remand the proceeding, in light of SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018), and the Director’s Guidance on the Impact of SAS on AIA Trial Proceedings, for us to address claims and grounds that we had not instituted.3 In response, we modified our Decision on Institution to institute trial for all challenged claims and all grounds. Paper 32, 3 (the “November 9, 2018, Order”). We ordered briefing on those claims and grounds added to the trial in the November 9, 2018, Order. See Paper 32, 3–7.” slip op. at 3

  • PTAB / AIA Trials › Motions to amend / substitute claimsAdverse judgmentGranted

    “certain claims and grounds added to the trial in our November 9, 2018, Order. Paper 33. In the motion, Kranos “requests adverse judgment as to . . . [c]laims 3, 4, 7, 13, and 36.” Id. at 2. The motion continues that claims 6 and 26 remain in this proceeding for the grounds of “[o]bviousness over each of Sears or Rappleyea in combination with Ispas.” Id. As to claims 3, 4, 7, 13, and 36, Kranos’s motion is granted. Accordingly, we will enter the following judgment as to those claims: (1) claim 13 is not proven unpatentable as anticipated by Sears; (2) claim 13 is not proven unpatentable as anticipated by Rappleyea; (3) claim 13 is not proven unpatentable as anticipated by Zeller; (4) claim 36 is not proven unpatentable as obvious over Sears, Rappleyea, or Monica and Halstead; and (5) claims 3, 4, and 7 are not proven unpatentable over Sears or Rappleyea and Ispas.” slip op. at 9

  • Skill levelSkill level board ownDecided for petitioner

    “record before us, and ultimately found that a person having ordinary skill in the art to which the ’118 patent pertains would have at least a Bachelor’s degree in engineering or physics and at least one year of experience in designing protective equipment, protective helmets, or plastic parts including the design of protective or structural plastic elements. Final Wrtn. Dec. 9–10. We also found that additional experience (at least three years) may be substituted for a formal engineering degree. Id. at 10. We found that the prior art of record reflects this level of ordinary skill in the art. Id. at 10–11. We noted that our patentability analysis presented below would reach the same findings and determinations under Kranos’s or Mr. Shewchenko’s definition of the level of ordinary skill in the art. Id. at 11. In the supplemental briefing, neither party argued for a different definition of the level of ordinary skill than the definition adopted in our Final Written Decision, nor do we discern any reason, based on the supplemental record, to change this definition.” slip op. at 12

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

    “The term “aligned along” does not appear in any claim addressed in this Supplemental Final Written Decision. See, e.g., Final Wrtn. Dec. 11 (indicating that the term “aligned along” appears in independent claim 34). In the Final Written Decision, we determined that we did not need to expressly construe the term “integrally formed” to resolve the parties’ dispute. See id. at 16. As will be apparent from our analysis below, we need not address this term further here.” slip op. at 13

  Patent outcomesUS 8,528,118 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,528,118
• Motivepower, Inc. v. Cutsforth, Inc.Some claims unpatentable
  PTAB · Sep 9, 2016 · IPR2013-00274 · APJ Trenton A Ward · IPR · Remand

  Claims 1–4, 6–7, and 9–24 are unpatentable as obvious over Bissett, Kartman, and Ohmstedt; claims 5 and 8 were not shown unpatentable.

  In the decision

  …evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). In that regard, an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a…

  RulingsRemand decision

  • RemandFwd mixedOther

    “On January 22, 2016, the Federal Circuit issued a decision vacating and remanding the case to the Board. Cutsforth, Inc. v. MotivePower, Inc., 636 F. App’x 575, 578 (Fed. Cir. 2016) (unpublished) (nonprecedential) (entered herein as Paper 38). The Federal Circuit held “that the Board’s Final Written Decision does not provide enough explanation to support its finding of obviousness.” Id. “When the Board determines that modifications and combinations of the prior art render a claimed invention obvious, the Board must fully explain why a person of ordinary skill in the art would find such changes obvious.” Id. at 578–79. As a result, the Federal Circuit vacated the Board’s determinations that claims 1–24 of the ’018 patent were not patentable and remanded the case to the Board “for proceedings appropriate to the administrative process.” Id. at 579 (citing In re Sang-Su Lee, 277 F.3d 1338, 1346 (Fed. Cir. 2002)). On February 29, 2016, the Federal Circuit issued a formal mandate, returning the case to the Board. Paper 39.” slip op. at 3

  • Additional discoveryAdditional discovery, grantedGranted

    “Patent Owner’s request to submit additional briefing in light of the remand and to discuss the Petitioner’s opposition to such additional briefing. Paper 37, 2. During the conference, Patent Owner indicated that it was seeking additional briefing because the “record is without adequate briefing as to whether one of skill would have made the changes that are contemplated as they relate to a spring that was at issue and relating to claim 5.” Ex. 2064, Transcript of March 29, 2016 conference call, 6:15–18. Patent Owner stated that “a remand typically . . . deserves briefing on the point of the remand to make sure the record is full and there could be a fulsome review of the issues that are thought by the Appellate Court to . . . need[] further review.” Id. at 7:20–25. Patent Owner further argued that additional briefing was needed because the record was “devoid of arguments . . . from either side on this issue”; thus, Patent Owner requested “briefing without evidentiary submission by either party, a page limited briefing of simultaneous submission.” Id. at 8:9–11, 11:12–14.4 We granted Patent Owner’s request to file additional briefing. Paper 37, 3. More particularly, we authorized additional briefing limited to the issue raised by Patent Owner, namely, the design choice issue with respect to claim 5 of the ’018 patent. Id. In accordance with the Board’s Order, both Petitioner and Patent Owner filed their briefs on April 15, 2016. See Paper 40 (“Petitioner Remand Br.”) and Paper 41 (“PO Remand Br.”). Subsequently, Patent Owner requested authorization to file a Reply Brief to address arguments presented in Petitioner’s Remand Brief. The Board granted the request and authorized both parties to file a reply brief. Accordingly, the parties filed reply briefs on April 29, 2016. See Paper 42 (“PO Remand Reply”) and Paper 43 (“Pet. Remand Reply”).” slip op. at 3

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

    “the “specification’s requirement that the mounting block must be fixed to a location.” PO Resp. 8. In support of this argument, Patent Owner relies on Figure 15B of the ’018 patent as depicting that lower mounting block 16, i.e., the “mounting block,” is fixed in place to mount base 41 via bolts 43. Id. at 910. Patent Owner further points to descriptions of various embodiments of the attachment of the “mounting block” to a base or to a location. Id. We determine that neither Figure 15B nor the statements in the specification identified by Patent Owner require the non-moveable, or “fixed,” aspect. Figure 15B does not show that the attachment excludes any ability to adjust the block. Indeed, the bottom surface of the mount is not depicted, leaving us to speculate concerning the shape of mount holes 96, because a round hole would suggest there is no adjustability, while a slotted or elongated hole would suggest adjustability. But see Ex. 1001, Fig. 9 (not cited by Petitioner, but confirming that elongated holes 96 are contemplated). The lack of description and depiction of the shape of the holes compels us to reject Patent Owner’s characterization of Figure 15B as supporting a “fixed” or non-moveable attachment. Furthermore, as for the descriptions of how the mount is attached, the specification uses the word “secure” and describes various embodiments of the attachment, none of which requires non-movability of the mount after the brush holder component is installed. See Ex. 1001, 12:35–36 (bolts and washers “secure the lower mount block 16 to a mount base” (emphasis added)), 14:5658 (“mount holes 96 may include threading or other elements that allow for attachment to a mount base”), 16:2528 (“in other embodiments, a welded, keyed, pinned or other attachment scheme may be used to secure the lower mount block 16 to a mount base” (emphasis added)). In fact, the specification makes a point of not limiting the attachment of the mount to any particular method, fixed or not fixed. See id. at 12:37–41 (“or other attachment scheme may be used to secure the lower mount block 16 to a mount base near a moving conductive surface or in position to move relative to a conductive surface”). Nor does the language of the claim recite any method of attachment that limits the mounting block to something that cannot be adjusted, shifted, re-positioned, or otherwise moved, after attachment to the base.” slip op. at 9

  • Skill levelOther

    “The level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 16

  Patent outcomesUS 7,990,018 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,990,018

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.