- Amneal Pharmaceuticals, LLC v. Supernus Pharmaceuticals, Inc.No claims unpatentablePTAB · Dec 9, 2014 · IPR2013-00371 · APJ Scott E Kamholz · IPR · Final written decision
Claims 1–13 and 17–20 were not shown unpatentable as obvious over Ashley ’932 and Sheth because Sheth did not disclose a delayed-release portion or the claimed IR:DR ratios.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“agree with Amneal that the broadest reasonable construction of “delayed release,” in light of the specification of the ’405 patent, is not limited to formulations requiring that there be no substantial release in the stomach. The portion of the ’405 patent specification upon which Supernus relies to support its narrower construction addresses properties of “enteric coated pellets,” not a delayed-release component. Ex. 1007, 7:56. The ’405 patent discloses formats other than enteric coated pellets, such as an “uncoated matrix tablet,” as being delayed-release components. Id. at 5:38–40 (“delayed-release portion can be . . . uncoated matrix tablet.”). Consequently, properties of enteric coated pellets do not address the full scope of “delayed release” as that term is used in the ’405 patent. We will not read the limitations of an embodiment, even a preferred embodiment, into the construction of a claim term that is plainly used elsewhere in the specification more broadly. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). As Supernus concedes, Tr. 42:7–9, the ’405 patent does not provide an express definition of “delayed release.” We turn, therefore, to other evidence of how the term is understood and used by persons of ordinary skill in the art. We find, upon consideration of this evidence, that the term “delayed release” is used, more-or-less uniformly, to refer to formats that allow for release of a drug only after some delay following oral administration. See, e.g., Ex. 2058, 30 (quoted supra); Ex. 2047, 7 (defining “delayed release” as “release of a drug (or drugs) at a time other than promptly after administration”);4 Ex. 2016 ¶ 106 (citing definition of “delayed release” in Ashley ’854, quoted supra, with approval). Those definitions are consistent with one another, both parties and their experts cite them with favor, and we discern nothing in the use of the term “delayed release” in the ’405 patent specification that is inconsistent with those definitions or more limiting than them. For these reasons, we determine that the broadest reasonable construction of “delayed release,” consistent with the ’405 patent, is “release of a drug at a time other than immediately following oral administration.” See Ex. 2058, 30; Ex. 2047, 7; Ex. 1003, 11:4–6.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“water-soluble polymer in the coating of Sheth’s secondary loading portion results in release of drug promptly after administration. See Ex. 2016 ¶ 172. Amneal does not cite credible evidence to refute Dr. Rudnic’s testimony. Although Dr. Rudnic conceded that there must be some lag while the polymer hydrates, we further credit his testimony that this lag, essentially the time required to wet the material, would not be considered a “delay.” See Ex. 1052, 248:3–5. We agree with Dr. Rudnic that dissolution, however rapid, necessarily requires some finite amount of time to allow interaction of the solvent and the solute. See Ex. 1005, 5:1–2. Amneal does not explain why we should not credit all of Dr. Rudnic’s testimony on this point. Because we credit Dr. Rudnic’s testimony, we agree with Supernus that Sheth’s secondary loading portion is not a “delayed release” portion. A “delayed release” format, when that term is construed to mean “release of a drug at a time other than immediately following oral administration,” specifically excludes formats that result in release of drug starting immediately after oral administration. To conclude otherwise would read the phrase “delayed release” out of the claim. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (all limitations of a claim must be considered when considering patentability over prior art). Amneal has not explained how there is any appreciable delay in the onset of drug release from the secondary loading portion once water in the patient’s saliva or gastric fluid has begun to solubilize the pH-insensitive polymer in the coating.6” slip op. at 13
- ExcludeMotion to exclude, deniedDenied
“MOTION TO EXCLUDE EVIDENCE Amneal moves to exclude Supernus Exhibits 2028, 2029, 2032–2034, 2039, 2049, 2050, 2147, 2149–2154, and 2156. Pet. Motion to Exclude 1. We dismiss Amneal’s motion as moot, because we do not rely on any of the objected-to evidence in our final decision. IV.” slip op. at 15
Patent outcomesUS 8,394,405 not shown unpatentableClaim construction§ 103 obviousnessPatents in suitUS 8,394,405 - Amneal Pharmaceuticals, LLC v. Supernus Pharmaceuticals, Inc.No claims unpatentablePTAB · Dec 9, 2014 · IPR2013-00372 · APJ Scott E Kamholz · IPR · Final written decision
Claims 1–12 and 16–21 were not shown unpatentable over Ashley ’932 and Sheth because Sheth’s secondary loading portion was not a delayed-release portion.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“agree with Amneal that the broadest reasonable construction of “delayed release,” in light of the specification of the ’406 patent, is not limited to formulations requiring that there be no substantial release in the stomach. The portion of the ’406 patent specification upon which Supernus relies to support its narrower construction addresses properties of “enteric coated pellets,” not a delayed-release component. Ex. 1009, 7:56. The ’406 patent discloses formats other than enteric coated pellets, such as an “uncoated matrix tablet,” as being delayed-release components. Id. at 5:38–40 (“delayed-release portion can be . . . uncoated matrix tablet.”). Consequently, properties of enteric coated pellets do not address the full scope of “delayed release” as that term is used in the ’406 patent. We will not read the limitations of an embodiment, even a preferred embodiment, into the construction of a claim term that is plainly used elsewhere in the specification more broadly. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).” slip op. at 7
- Expert testimonyPatent owner expert creditedDecided for patent owner
“We credit Dr. Rudnic’s declaration testimony that inclusion of a water-soluble polymer in the coating of Sheth’s secondary loading portion results in release of drug promptly after administration. See Ex. 2016 ¶ 176. Amneal does not cite credible evidence to refute Dr. Rudnic’s testimony. Although Dr. Rudnic conceded that there must be some lag while the polymer hydrates, we further credit his testimony that this lag, essentially the time required to wet the material, would not be considered a “delay.” See Ex. 1052, 248:3–5. We agree with Dr. Rudnic that dissolution, however rapid, necessarily requires some finite amount of time to allow interaction of the solvent and the solute. See Ex. 1005, 5:1–2. Amneal does not explain why we should not credit all of Dr. Rudnic’s testimony on this point.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“that Sheth’s secondary loading portion is not a “delayed release” portion. A “delayed release” format, when that term is construed to mean “release of a drug at a time other than immediately following oral administration,” specifically excludes formats that result in release of drug starting immediately after oral administration. To conclude otherwise would read the phrase “delayed release” out of the claim. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (all limitations of a claim must be considered when considering patentability over prior art). Amneal has not explained how there is any appreciable delay in the onset of drug release from the secondary loading portion once water in the patient’s saliva or gastric fluid has begun to solubilize the pH-insensitive polymer in the coating.6” slip op. at 13
Patent outcomesUS 8,394,406 not shown unpatentableClaim construction§ 103 obviousnessPatents in suitUS 8,394,406 - Amneal Pharmaceuticals, LLC v. Supernus Pharmaceuticals, Inc.No claims unpatentablePTAB · Dec 9, 2014 · IPR2013-00368 · APJ Scott E Kamholz · IPR · Final written decision
Amneal did not prove claims 1, 2, 5–15, and 19–22 unpatentable as obvious over Ashley ’932 and Sheth because Sheth did not disclose a delayed-release portion.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“agree with Amneal that the broadest reasonable construction of “delayed release,” in light of the specification of the ’740 patent, is not limited to formulations requiring that there be no substantial release in the stomach. The portion of the ’740 patent specification upon which Supernus relies to support its narrower construction addresses properties of “enteric coated pellets,” not a delayed-release component. Ex. 1001, 7:47. The ’740 patent discloses formats other than enteric coated pellets, such as an “uncoated matrix tablet,” as being delayed-release components. Id. at 5:29–31 (“delayed-release portion can be . . . uncoated matrix tablet.”). Consequently, properties of enteric coated pellets do not address the full scope of “delayed release” as that term is used in the ’740 patent. We will not read the limitations of an embodiment, even a preferred embodiment, into the construction of a claim term that is plainly used elsewhere in the specification more broadly. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). As Supernus concedes, Tr. 42:7–9, the ’740 patent does not provide an express definition of “delayed release.” We turn, therefore, to other evidence of how the term is understood and used by persons of ordinary skill in the art. We find, upon consideration of this evidence, that the term “delayed release” is used, more-or-less uniformly, to refer to formats that allow for release of a drug only after some delay following oral administration. See, e.g., Ex. 2058, 30 (quoted supra); Ex. 2047, 7 (defining “delayed release” as “release of a drug (or drugs) at a time other than promptly after administration”);3 Ex. 2016 ¶ 105 (citing definition of “delayed release” in Ashley ’854, quoted supra, with approval). Those definitions are consistent with one another, both parties and their experts cite them with favor, and we discern nothing in the use of the term “delayed release” in the ’740 patent specification that is inconsistent with those definitions or more limiting than them. For these reasons, we determine that the broadest reasonable construction of “delayed release,” consistent with the ’740 patent, is “release of a drug at a time other than immediately following oral administration.” See Ex. 2058, 30; Ex. 2047, 7; Ex. 1003, 11:4–6.” slip op. at 7
- Expert testimonyPatent owner expert creditedDecided for patent owner
“We credit Dr. Rudnic’s declaration testimony that inclusion of a water-soluble polymer in the coating of Sheth’s secondary loading portion results in release of drug promptly after administration. See Ex. 2016 ¶ 175. Amneal does not cite credible evidence to refute Dr. Rudnic’s testimony. Although Dr. Rudnic conceded that there must be some lag while the polymer hydrates, we further credit his testimony that this lag, essentially the time required to wet the material, would not be considered a “delay.” See Ex. 1052, 248:3–5. We agree with Dr. Rudnic that dissolution, however rapid, necessarily requires some finite amount of time to allow interaction of the solvent and the solute. See Ex. 1005, 5:1–2. Amneal does not explain why we should not credit all of Dr. Rudnic’s testimony on this point.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“For this reason, we determine that Amneal has failed to show that Sheth discloses a “delayed release” portion. Amneal’s argument that Sheth discloses the claimed IR:DR ratio (or makes the claimed ratio reachable through routine experimentation) thus becomes untenable. Dr. Van Buskirk’s evidence concerning ratios in Sheth is premised on an assumption that Sheth’s secondary loading portion is a delayed release portion. See, e.g., Ex. 1022 ¶ 59 (“Additionally, the secondary loading coated pellets (the DR component) described in the ’748 patent . . .”). That assumption is unwarranted, for the reasons given above. Consequently, Sheth’s disclosure of ratios involving the secondary loading portion does not constitute disclosure of ratios involving a delayed release portion. Put another way, Amneal has failed to persuade us that the prior art it cites for disclosure of IR:DR ratios actually discloses such ratios. Without evidence that the claimed IR:DR ratio was known or could have been reached through routine experimentation, Amneal’s challenge fails. For the reasons discussed above, we conclude that Amneal has not” slip op. at 14
- ExcludeMotion to exclude, deniedDenied
“We dismiss Amneal’s motion as moot, because we do not rely on any of the objected-to evidence in our final decision. IV.” slip op. at 15
Patent outcomesUS 8,206,740 not shown unpatentableClaim construction§ 103 obviousnessPatents in suitUS 8,206,740 - Tandus Flooring, Inc. v. Interface, Inc.All claims unpatentablePTAB · Dec 8, 2014 · IPR2013-00333 · APJ Miriam L Quinn · IPR · Final written decision
Claims 6-15, 20-39, and 43-58 were shown unpatentable over Pacione and the listed Kinoshita combinations; cancellation was granted for claims 1-5, 16-19, and 40-42, while substitute claims 59 and 60 were denied.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“On the whole, we are not persuaded that the ordinary and customary meaning, under the broadest reasonable interpretation, of the “shear strength” limitation is limited to lateral movement or lateral gaps, because there is insufficient evidence that such a narrow interpretation is appropriate. See E-Pass 9 Ex. 1027 (Definition gap (n)(4), Webster’s Ninth New Collegiate Dictionary, 1986 (“a separation in space”); Definition gap (n)(1), Webster’s II New College Dictionary, 1996 (“an opening as in a wall”)). 10 See Ex. 2052, 102:3104:19. We note Patent Owner contends that Mr. Gray’s testimony is biased and contradictory. Paper 57, PO Mot. for Observations 2, 7. We also note that Petitioner responded to these contentions by showing testimony regarding the level of knowledge of Mr. Gray and that the testimony is consistent with Petitioner’s allegations that the word “gap” includes lateral separation, but does not exclude vertical separation. Paper 63, Pet. Resp. to PO Mot. for Observations 12, 910. We have taken Patent Owner’s contentions and Petitioner’s response into consideration when determining the weight accorded to Mr. Gray’s testimony. Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1368 (Fed. Cir. 2003) (Where no explicit definition for the term “electronic multi-function card” was given in the specification, this term should be given its ordinary meaning and broadest reasonable interpretation; the term should not be limited to the industry standard definition of credit card where there is no suggestion that this definition applies to the electronic multi-function card as claimed, and should not be limited to preferred embodiments in the specification.). Turning to the disputed claim language, as we stated in our Decision on Institution, we determine that the word “sufficient” introduces a relative amount to the recited “shear strength.” The phrase “shear strength” is the capacity of a material to resist shear.11 And “shear” is “a strain resulting from applied forces that cause or tend to cause contiguous parts of a body to slide relatively to each other in a direction parallel to their plane of contact.”12 Applying the plain and ordinary meaning to the claim language, therefore, the layer of adhesive must have the adequate capacity to resist shear. The layer’s capacity, however, does not narrow the claimed function of including such a layer in the connector to prevent only lateral movement of adjacent tiles and lateral gaps from forming after installation. The plain language of the claims confirms this interpretation because the result of providing the “sufficient shear strength” at the adhesive layer is to 11 Definition shear strength, WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY, UNABRIDGED (1993), available at http://lionreference.chadwyck.com (Dictionaries/Webster’s Dictionary) (Exhibit 3001). 12 Definition shear, WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY, UNABRIDGED (1993), available at http://lionreference.chadwyck.com (Dictionaries/Webster’s Dictionary) (Exhibit 3002). prevent adjacent tiles from moving relative to the connector or each other. This claim language indicates that abutting tile edges are prevented from moving “in a direction parallel” to the plane of contact—which would include both lateral and vertical movement. For example, lifting may be prevented when providing a resistance to shear sufficient to allow for the horizontal strain caused by suction, traffic, and any other dragging force.” slip op. at 10
- Skill levelSkill level board ownDecided for patent owner
“We are persuaded that the level or ordinary skill in the art combines the knowledge of carpet tile installation and adhesive tape characteristics. The prior art of record, particularly Kinoshita, describes the solution of laying carpet tiles using adhesive tape pieces to avoid laying adhesive on the floor. Ex. 1006 ¶¶ 12, 5. Pacione also describes installation of carpet modules without substantial attachment to the floor. Ex. 1004, Abstract. Therefore, we agree with Patent Owner that the level of ordinary skill in the art includes knowledge of carpet tiles and their installation methods. We disagree with Patent Owner, however, in that the level or ordinary skill in the art would not include expertise in adhesive tape characteristics. See PO Resp. 18 (arguing that Dr. Jensen is not a POSITA because his expertise relates to pressure sensitive adhesive tapes). For instance, Kinoshita discloses the use of removable, single-side or double-sided adhesive tape that is pressed to the rear of the carpet tiles. Ex. 1006 ¶¶ 7–8, 12. Kinoshita recognizes that the adhesive must be of sufficient strength to stick to the rear of the carpet tile, but also allow for repositioning. Id. ¶ 12. Details of the backing for pressure sensitive adhesive tape are part of the prior art of record, such as Robinson (Ex. 1011). For example, Robinson describes the properties and characteristics to make the adhesive tape backing suitable for pressure-sensitive adhesive tapes. Id. at col. 1, l. 46col. 2, l. 44. Therefore, it is appropriate that we consider, as part of the level of ordinary skill in the art, knowledge of adhesive tape appropriate for carpet tile installations as described in Kinoshita, as well as the knowledge of the properties and characteristics of pressure-sensitive tapes suitable for the use in carpet tile installations.” slip op. at 15
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Lastly, we credit the testimony of Dr. Tippett and Dr. Jensen in that the Kinoshita disclosure confirms the knowledge of a person of ordinary skill in the art regarding the use of adhesive tapes for carpet tile installations. For the reasons that follow, we are not persuaded by Patent Owner’s characterizations of their testimony that engineering adhesive tape for carpet tile installations was vastly complex or would involve extensive trial and error. See PO Resp. 2325. First, we acknowledge that Petitioner does not rely solely on Kinoshita as disclosing all the attributes of the adhesive tape. Indeed, the Dr. Tippett Declaration clarifies that his opinion relies on the disclosures of Kinoshita to the degree it describes the configuration and performance of the installed carpet units, e.g., a “floating” installation, edge-to-edge configuration, unitary installation, etc. Ex. 1018 ¶¶ 13.113.2. We credit Dr. Tippett, who has expertise and knowledge of carpet tile installations, when he declares that the installation described in Kinoshita would have no “gapping” at the seams, and, therefore, the tape, being single-sided, would have to include an adhesive that would resist movement of the tiles. Id. ¶¶ 13.313.5. It makes sense that a method of carpet tile installation for commercial or household use would aim for carpet tiles that, after installation, remain abutted. See Ex. 1006 ¶ 1 (“tile that is used in offices and homes”). Dr. Tippett’s Declaration further states that Kinoshita supports his conclusions of the basic requirements for the use of adhesive tape in a carpet tile installation. Ex. 1018 ¶ 13.6. To support his conclusions, Dr. Tippett cites to Kinoshita teaching pre-connected tiles, which are installed as a block of tiles. Id. For this installation to be successful, the adhesive tape of Kinoshita, according to Dr. Tippett, “must include an adhesive with sufficient shear strength and sufficient peel strength to prevent movement of the tiles relative to one another and/or the tape pieces.” Id. The Dr. Jensen Declaration also concludes that the teachings in Kinoshita confirm that a person of ordinary skill in the art would select an adhesive tape with the recited shear strength. First, Dr. Jensen opines that suitability for the intended purpose is a core consideration when selecting or designing tape for a given application. Ex. 1020 ¶ 17.2. His Declaration then lists the criteria to consider when selecting a tape that would maintain the Kinoshita carpet units connected and abutting (in an edge-to-edge configuration). Id. ¶¶ 17.317.5 (listing adhesive compatibility with the tile backing with suitability for the environment and duration of use, as well as providing sufficient wetting and adequate peel and adhesion). Once Dr. Jensen arrives at the basic requirements of an adhesive tape selection, he looks to Kinoshita once more to confirm that Kinoshita recognizes these requirements. Id. ¶¶ 17.617.11 (establishing that, because Kinoshita discloses multiple pre-connected tiles being handled as a block, the adhesive tape would need to have sufficient shear adhesion and peel adhesion to prevent the carpet tiles from pulling or twisting apart from each other while the tiles are moved). Based on the cited testimony, we are not persuaded that Petitioner is relying on a theory of inherency with regard to whether Kinoshita discloses the “sufficient shear strength” limitation. Therefore, the arguments by Patent Owner rebutting the alleged “inherency” are unpersuasive. See PO Resp. 2224. Petitioner relies on what Kinoshita teaches to a person of ordinary skill in the art. That person is a person of ordinary creativity, not an “automaton.” KSR, 550 U.S. at 421. We “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. Therefore, based on the evidence presented, we agree with Petitioner that Kinoshita teaches, to a person of ordinary skill in the art, the use of adhesive tape for carpet tile installations where the adhesive has “sufficient shear strength,” per our construction of this phrase.” slip op. at 31
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“teach the “sufficient shear strength” limitation. PO Resp. 2728. According to Patent Owner, the disclosure in Pacione is no more than a suggestion to try adhesive and is not an enabling disclosure. Id. We agree with Patent Owner that the “sufficient shear strength” limitation is recited as a property of the layer of adhesive. See id. at 28 (Patent Owner arguing that the rigidity and stability are characteristics of Pacione’s anchor sheets, not the adhesive). Nevertheless, the “sufficient shear strength” property results in connector that prevents adjacent tiles from moving relative to the connector or each other and thereby creating gaps between the adjacent tiles after installation. That is, an adhesive would have the requisite shear strength when the connector accomplishes the prevention of the relative movement that creates gaps. In Pacione, we find that the anchor sheets, the recited “connector,” are attached with a detachable attachment that could also be an adhesive. Ex 1004, col. 4, ll. 5155. With Pacione’s anchor sheets using the disclosed detachable attachment (including the adhesive option) the installed anchor sheets form a contiguous floor covering having sufficient rigidity and horizontal plane stability or shear force stability. Id. at col. 4, ll. 1520, col. 5, ll. 39. We find this disclosure particularly significant because it specifically attributes the shear force stability to the installed anchor sheets under the carpet pieces, i.e., the recited “connectors” with the layer of adhesive. It follows from this express disclosure of shear force stability that the installed carpet tiles are stable in the horizontal plane, such that their movement with respect to each other, and with respect to the anchor sheets, would be restricted. Patent Owner fails to point us to evidence that Pacione’s anchor sheets, under carpet tiles, exhibiting the disclosed shear force stability, do not prevent the recited relative movement that creates gaps as recited. As for the argument that Pacione is not enabled with regard to the disclosure of using adhesive in place of hook and loop, we have not been directed to facts sufficient to show that such a disclosure would not inform one of ordinary skill in the art how to make the claimed connector. See In re Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985) (“Such possession is effected if one of ordinary skill in the art could have combined the publication’s description of the invention with his [or her] own knowledge to make the claimed invention.”). It is undisputed that Pacione discloses replacement of the hooks with adhesive. Patent Owner makes the point, however, that Pacione does not disclose the characteristics of the adhesive. PO Resp. 27. The question for us to decide is whether Pacione’s disclosure of adhesive is sufficiently enabled to allow a person of ordinary skill in the art to make the claimed connector. The lack of details regarding adhesive properties, however, does not negate that Pacione discloses the adhesive application together with anchor sheets that achieve shear force stability when installed. Furthermore, the testimony of Mr. Benny Wood, proffered by Patent Owner to support its contention, does not persuade us that disclosure of adhesive in Pacione is not enabling. Id. (citing Ex. 2017 ¶ 131). That testimony focuses on whether Pacione teaches an adhesive that would prevent lateral movement, a narrow view of the claims that we do not adopt per our claim construction discussion above. See Ex. 2017 ¶ 131. Furthermore, in his cross-examination, Mr. Wood did not dispel the notion that Pacione’s disclosure of adhesive would be sufficient, because his reasons for opining that the adhesive is not taught sufficiently are not relevant to the scope of the claim. For example, Mr. Wood” slip op. at 23
Patent outcomesUS 8,381,473 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,381,473 - JDS Uniphase Corporation v. Fiber, LLCSome claims unpatentablePTAB · Dec 5, 2014 · IPR2013-00318 · APJ Jacqueline Wright Bonilla · IPR · Final written decision
Claims 1, 53–66, 69, and 71–74 are unpatentable; claims 67, 68, and 70 are not shown unpatentable. The contingent motion to amend is denied.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“As discussed on our Decision to Institute (Dec. 7–8), we conclude that Patent Owner’s proposed definition of “optical beam” imports improperly a limitation into the claims. The claims themselves do not recite “communications.” Likewise, the ’917 patent Specification does not indicate that “optical beam” is limited to a communications beam, such that it would exclude a YAG laser beam, for example. As noted by Patent Owner, the Specification states that the “invention relates generally to optical switching and more particularly to non-electrical switching of laser communication signals.” Ex. 1001, 1:12–14. In other words, the Specification indicates that communication signals may be a preferred embodiment of the recited “optical beam,” but the claim phrase is not limited to that particular embodiment. See also Ex. 1011, 95:23–96:4 (testimony of Patent Owner’s witness, Dr. David A. Smith, stating that the Specification describes a system that “could switch [a] non-communication beam”); Reply 4. Patent Owner’s proposed dictionary meanings of the terms “transmit,” as relevant to “transmitting” in the claims, as well as “receptor,” do not persuade us otherwise. For example, a dictionary definition of the term “transmit” indicates that it means, more generally, to “send or forward, as to a recipient or destination” or “convey,” even if “[t]o communicate” is another alternative definition. Ex. 2018, 6. Patent Owner does not persuade us that switches for YAG lasers, for example, do not “send or forward” a laser beam. In fact, Patent Owner’s own proposed definition of “transmit” is not limited to sending or forwarding information used in the field of communications, where communications, according to Patent Owner, excludes YAG laser beams. Likewise, as Patent Owner acknowledges (PO Resp. 8–9), the term “optical receptor” is not limited to an element that receives electronic signals, and the Specification, which does not mention the term “receptor” except in the claims, likewise does not limit this term as such. See also Dec. 7 (discussing “optical receptor”); see also infra. Moreover, use of the phrases “optical signal” and “light signal” in a similar context as “optical beam” in the Specification does not mean that “optical beam” is limited to “a light beam consisting of communications information.” PO Resp. 12–13. Similarly, even assuming the Examiner relied exclusively on prior art relating to communications during prosecution of the ’917 patent, that fact would not dictate how we apply our claim construction standard, i.e., the broadest reasonable interpretation in light of the Specification.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“2. Other Claim Terms Construed in the Decision to Institute In our Decision to Institute, we construed other terms in the challenged claims—namely, “control,” “optical receptors,” and “data gathering and transmission element,” as recited in independent claims 1 and 53, as well as “adjacent,” as recited in dependent claims 54 and 55. Dec. 8–10. Patent Owner does not propose alternative claim constructions for those claim phrases in its Patent Owner Response, nor did Petitioner challenge our constructions in its Reply. We discern no reason to alter our claim constructions for this Final Written Decision. For convenience, our claim constructions are reproduced in the table below. Claim(s) Claim Phrase Claim Construction 1 and 53 “control” “an element that controls and adjusts one or more beam directing devices (e.g., mirrors), which in turn control transmission of an optical beam from a source and/or mirror(s) to an optical receptor” 1 and 53 “optical receptor” “an element that receives an optical beam after it has been directed by a beam directing device (e.g., mirror),” such as “another optic fiber (cable 7) or optical switch (optical switch 5), as depicted in Figure 1 of the ’917 patent”” slip op. at 10
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Patent Owner further contends, however, that Hurst and Young are not analogous art. Patent Owner contends that, unlike Young, “Hurst does not involve optical switching in the fiber optic communications field,” but instead “relates to the use of micro-machined elements in optical data storage systems.” Id. at 48 (citing Ex. 1005, Abstract). Citing Dr. Smith’s Declaration in support, Patent Owner contends that the Hurst embodiments differ in a number of ways from the fiber optic communications switch described in Young. Id. at 48–50 (citing Ex. 2017, 70–74). For instance, Patent Owner contends that Hurst uses “very short-length polarization-maintaining fibers coupled to mechanical read-write arms,” and involves wavelengths that are “visible or near ultraviolet,” necessitating “alignment requirements of the polarization” to maintain visible or near ultraviolet optics. Id. at 49. Patent Owner contends, citing Dr. Smith’s testimony, that communication switches, such as those disclosed in Young, “require a specific optical system architecture” that “impacts mirror size and overall switch size,” and that the “details of solving that particular optical problem are substantially different than solving the short-wavelength optics challenges of Hurst.” Id. at 49 (citing Ex. 2017, 72–73). Thus, according to Patent Owner, Hurst’s use of polarization-maintaining fibers and shorter wavelengths “change substantially the optical design and the components, such as optical coatings.” Id. at 51. Patent Owner contends that Hurst does not teach “(1) [] a communications-grade fiber switch; (2) how to monitor intensity of the transmitted signal; or (3) how to close a fine alignment loop.” Id. Thus, according to Patent Owner, an ordinary artisan would not have known how to add the feedback element (differential detector) of Hurst to the Young switch system and get it to work, i.e., the teachings “leave[] the combination lacking enablement.” Id. We are not persuaded that Young and Hurst are non-analogous art because, as Petitioner points out, both references describe optical switching and are directed to coupling laser light to receptors with rotational reflective elements. Pet. 21. Patent Owner’s contentions still are relevant, however, to the issue of whether one of ordinary skill in the art would have had reason to combine the elements disclosed in Young and Hurst when making an optical switch.” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“In this regard, Petitioner argues that a person having ordinary skill in the art would have had reason to provide “the feedback” of Hurst with Young’s optical switching system “for the benefit of ensuring that the reflective mirror is properly controlled.” Id.. Petitioner also argues that “the addition of feedback as taught by Hurst into Young would be a use of a known technique to improve a similar device in the same way.” Id. According to Petitioner, “[o]ne of ordinary skill in the art would have realized that Young provided a base device, and Hurst provided a comparable device, and that adding the feedback of Hurst to Young would have been predictable.” Id. Petitioner cites no evidence, such as a declaration from an expert witness, in support of those contentions, however, especially in relation to the differential detector (data gathering and transmission element) in Hurst. Id. Moreover, Petitioner does not explain sufficiently how, or show why, one would have added that element of Hurst to the optical switch of Young, or one would have been using a “known technique to improve a similar device in the same way,” or that “adding the feedback of Hurst to Young would have been predictable.” By contrast, as discussed above, Patent Owner explains, citing evidence in support, i.e., Dr. Smith’s Declaration, that one reading the two references would have understood that the two disclosed systems differed enough, such that it would not have been straightforward or “predictable” to combine elements. We conclude that Petitioner does not address adequately in its Petition, nor respond sufficiently in its Reply to Patent Owner’s Response, contentions raised by Patent Owner in this regard, or in cited testimony by Dr. Smith. At most, Petitioner contends in its Reply that independent claims 1 and 53 of the ’917 patent do not recite elements identified by Patent Owner as deficient in Hurst, and that Patent Owner’s “attempts to read limitations from the specification into the claims is improper.” Reply 14. We are not persuaded that Petitioner shows by a preponderance of the evidence that an ordinary artisan would have included “at least one data gathering and transmission element,” as recited in challenged independent claims 1 and 53, in the optical switch disclosed in Young based on the teachings in Hurst or Young. For the reasons given above, and in light of the record before us, Petitioner” slip op. at 35
Patent outcomesUS 7,095,917 mixedClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,095,917 - JDS Uniphase Corporation v. Fiber, LLCSome claims unpatentablePTAB · Dec 5, 2014 · IPR2013-00336 · APJ Jacqueline Wright Bonilla · IPR · Final written decision
Claims 112, 123, 124, 127, 129, 131, 133, and 134 are unpatentable as obvious over Chande; the remaining challenged claims were not shown unpatentable, and the motion to amend was denied.
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“of the phrase “servo control” refers to a “control” element, as opposed to a “servo control” or “data gathering and transmission” element, as recited in challenged claims, where the “servo control” in the provisional application controls movement of a mirror using a “push+pull magnetic force,” for example. Ex. 2006, 7. Consistently, the provisional application states that “[i]t may be desirable to add damping mechanism for better servo control,” i.e., to control movement of the mirrors, and that “resulting push+pull magnetic force is more linear and also larger than the pull only design, and allows for better servo control,” i.e., control of the position of the mirrors. Id. at 5, 7; see also PO Resp. 18. Patent Owner’s position relies on an inherency argument in relation to one sentence in the provisional application, as discussed above, which indicates that after velocity of the mirror is “zeroed,” “currents are adjusted to hold it in place.” Ex. 2006, 7. We are not persuaded that this one sentence describing the adjustment of currents to hold a mirror in place necessarily describes a closed-loop, feedback system, or “an error signal” that is “used in order to correct the angular changes so as to reduce that error signal,” as stated by Dr. Smith. PO Resp. 19–12 (citing Ex. 2017, 44). We do not see how this sentence, expressly or inherently, describes a separate “servo control element” or “data gathering and transmission element” as recited in claims 112 and 123, respectively (i.e., something different from the “control” element of each of those claims, which corresponds to the “servo control” in the provisional application), where each element provides a feedback signal regarding current orientation of the mirror or current location of the optical beam.” slip op. at 15
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“We are not persuaded that Chande and Buchin are non-analogous art to each other because, as Petitioner points out, both references are directed to optical switching and coupling of laser light to receptors with rotational reflective elements. Id. at 22. We still address, however, whether one of ordinary skill in the art would have had reason to combine the elements disclosed in Chande and Buchin when making the optical switch of claims 130 and 132.” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMixed
“As an initial matter, we note that Petitioner cites no evidence, such as a declaration from an expert witness, in support of those contentions. Id. In any event, Petitioner does not explain sufficiently how, or show by a preponderance of the evidence why, one would have added a stationary mirror or focusing lens “disposed between a source and one of the first movable mirrors,” as Petitioner contends is disclosed in Buchin, to the system described in Chande. Petitioner’s assertion that “inclusion of additional sources” would have been predictable or accomplished does not explain, nor provide evidence, as to why one would have included an additional stationary mirror or a focusing lens in a different location, i.e., elements that differ from “additional sources,” in the optical switch of Chande. Id.; see also Reply 12 (stating only that Chande and Buchin are both in the field of optical switching, and Patent Owner’s “attempts to read limitations from the specification into the claims is improper”). Thus, we are not persuaded that Petitioner shows by a preponderance of the evidence that an ordinary artisan would have included a stationary mirror, or focusing lens “disposed between a source and one of the first movable mirrors,” as recited in challenged claims 130 and 132 and Petitioner contends are disclosed in Buchin, in the optical switch disclosed in Chande.” slip op. at 35
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“Oakley, Inc. v. Sunglass Hut Int’l, 316 F.3d 1331, 1339 (Fed. Cir. 2003). Thus, a motion to amend claims must identify how the proposed substitute claims are to be construed, especially when the proposed substitute claims introduce new claim terms. See Idle Free Sys., Inc. v. Bergstrom, Inc., Case IPR2012-00027, slip op. at 7 (PTAB June 11, 2013) (Paper 26). In its Motion to Amend, Patent Owner introduces three new claim terms— i.e., “communications,” “fiber,” and “fiber optical”—in its proposed substitute claims. Patent Owner argues that those claim features distinguish the proposed substitute claims from the prior art. See, e.g., Motion 11–14. Patent Owner does not provide, however, adequate claim constructions or explanations for how the new claim terms should be construed. For example, in relation to the term “communications,” Patent Owner offers, at most, that the addition of this term means that the recited subject matter “involve[s] switches only in the fiber optic communications field of endeavor,” and that the term identifies claimed components as “related to a fiber optic switching device that switches optical beams containing communications signals.” Id. at 5, 11–12. Simply referring to the terms “communications,” “fiber,” and “fiber optic” in the Motion to Amend does not define adequately an ordinary and customary meaning of “communications,” as would be understood by one of ordinary skill in the art in the context of the Specification (which itself does not define “communications”). Ex. 1001, 1:11–14 (presenting the one time the term “communication” is used in the ’332 patent Specification). During the oral hearing, Patent Owner’s counsel, upon questioning, proposed that “communication” means “a beam of light, with a frequency around approximately 1500 nanometers.” Paper 39, 47:4–13. The Motion to Amend, however, does not suggest such a claim construction, nor refer to any evidence, e.g., a dictionary or scientific definition, in support. Moreover, as discussed during the oral hearing, it is not clear from the record if “communication” might mean simply “transmission of information,” a definition not limited to a beam of light at 1500 nm. Id. at 53:14–55:18. Without a reasonable construction of the new claim features added by the proposed substitute claims, Patent Owner’s Motion does not provide adequate information for us to determine whether its proposed substitute claims are patentable over the prior art generally. Thus, we are not persuaded that Patent Owner has met its burden to demonstrate patentability of the proposed substitute claims under 37 C.F.R. § 42.20(c). 2. Written Description Support A motion to amend claims must identify clearly the written description support for each proposed substitute claim. 37 C.F.R. § 42.121(b). The written description test is whether the original disclosure of the application relied upon reasonably conveys to a person of ordinary skill in the art that the inventor had possession of the claimed subject matter as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Thus, the motion should account for the claimed subject matter as a whole, i.e., the entire proposed substitute claim, when showing where there is sufficient written description support for each claim feature. See Nichia Corp. v. Emcore Corp., Case IPR2012-00005, slip op. at 4 (PTAB June 3, 2013) (Paper 27).” slip op. at 50
Patent outcomesUS 6,430,332 mixed§ 103 obviousness§ 112 disclosurePatents in suitUS 6,430,332 - Toyota Motor Corp. v. Leroy G. HagenbuchAll claims unpatentablePTAB · Dec 5, 2014 · IPR2013-00483 · APJ Jeremy M Plenzler · IPR · Final written decision
Claims 1–3, 5–8, 18–20, and 22–25 are unpatentable as obvious over Aoyanagi and Oishi, and independently over Aoyanagi and Vollmer.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“SUMMARY Petitioner has demonstrated, by a preponderance of the evidence, that claims 1–3, 5–8, 18–20, and 22–25 are unpatentable as obvious over the combination of Aoyanagi and Oishi, and that claims 1–3, 5–8, 18–20, and 22–25 are unpatentable as obvious over the combination of Aoyanagi and Vollmer. This is a final written decision of the Board under 35 U.S.C. § 318(a). IV. ORDER For the reasons given, it is ORDERED that claims 1–3, 5–8, 18–20, and 22–25 of the ’917 patent are unpatentable.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“the vehicle in response to detecting the collision” limitation from claim 1, Petitioner cites Oishi as teaching this limitation. Pet. 10, 14. We have reviewed, and are persuaded by, Petitioner’s contentions regarding the teachings of Oishi. Petitioner reasons that one skilled in the art would have combined the teachings of Oishi with Aoyanagi because both references are directed to an apparatus installed on a vehicle to address collisions (id. at 8), and “Oishi teaches that automatically sending a distress signal upon detection of an accident facilitates the handling of the accident and the treatment of injured persons” (id. at 11 (citing Ex. 1005 (633:2:25–27)). Petitioner further reasons that one skilled in the art would have combined the teachings of the references based on Oishi’s discussion of “significant improvements in emergency response times” and “reduc[ing] traffic jams” based on the automatically generated distress signal being included with an accident detection apparatus. Id. (citing Ex. 1005, 633:2:20–25, 27–29). Patent Owner does not dispute Petitioner’s contentions regarding the teachings of Oishi, which we find persuasive as noted above, but challenges Petitioner’s rationale for combining Oishi’s teachings with Aoyanagi. PO Resp. 32–39. Patent Owner argues that: (1) the references would not have been combined because the references detect accidents in different ways (id.); (2) the references have different functions (id. at 35–36); (3) Oishi is not designed to preserve data (id. at 36); and (4) Petitioner’s reason to combine the references is based solely on Oishi’s distress signal functionality, without any reference to the event data monitoring or storage features of either Aoyanagi or the claims (id. at 36–39). Oishi describes “an apparatus which can automatically notify an automobile accident after obtaining the impact force of the accident.” Ex. 1005, 634:1:3–5. As Petitioner contends (Pet. 8, 11), and Patent Owner acknowledges (PO Resp. 35), both Aoyanagi and Oishi are directed to accident detection, with Oishi providing the additional benefit of automatic accident notification. We are persuaded that one skilled in the art would have combined the automatic distress signal from the accident detection system of Oishi with Aoyanagi’s accident detection system based on the benefits cited by Petitioner, discussed above, regardless of whether the systems of Aoyanagi and Oishi detect accidents in different ways.” slip op. at 11
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Furthermore, Patent Owner has not even attempted to show a nexus between any sales and the merits of the claimed invention. Although Patent Owner references several claim limitations, there is no explanation as to how these limitations are related to the alleged commercial success of the claimed invention other than simply alleging that the limitations are present in Toyota’s 12EDR device. See PO Resp. 40–42. For example, Patent Owner simply alleges that “vehicles equipped with Toyota’s 12EDR system in combination with Safety Connect systems are covered by at least claims 1–3, 5–7, 18–20 and 22–24 of the ‘917 Patent.” Id. at 42 (emphasis added). Patent Owner’s general allegation of “a strong nexus between Toyota’s sales of EDR/ACN-equipped vehicles and the claims of the ’917 Patent” because “[a]bsent infringement of at least claims 18 and 24 of the ’917 Patent, Toyota would be unable to equip its vehicles with both an event data recorder compliant with the EDR Regulations and the automatic collision notification functionality of its Safety Connect system” (id. at 43) is also unpersuasive. Initially, we note that Petitioner disputes Patent Owner’s claim that Toyota infringes claims 18 and 24 of the ’917 patent. Pet. Reply 13. We further note that, in this proceeding, Patent Owner has not established the alleged infringement. Nevertheless, “[e]vidence of commercial success, or other secondary considerations, is only significant if there is a nexus between the claimed invention and the commercial success.” Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006). To show how commercial success supports nonobviousness, Patent Owner must prove that the sales were a direct result of the unique characteristics of the invention, and not a result of economic and commercial factors unrelated to the quality of the patented subject matter. Applied Materials, 692 F.3d at 1299–1300. Patent Owner, however, fails to provide sufficient proof of such a relationship between any alleged sales and the unique characteristics of the invention. As Petitioner notes, any alleged commercial success could be due to the automatic collision notification feature (Toyota’s “Safety Connect” system), rather than the other limitations recited in the claims. Pet. 13. Patent Owner does not dispute that automatic collision notification systems were known in the art. See PO Resp. 11–13, 39–44. If the feature that created the commercial success was known in the prior art, the success is not pertinent to the issue of obviousness. Galderma Laboratories, L.P. v. Tolmar, Inc., 737 F.3d 731, 740 (Fed. Cir. 2013).” slip op. at 18
- Obviousness (§103) › Objective indicia / secondary considerations › Commercial successNot shown unpatentableDecided for petitioner
“Patent Owner simply cites to the sales price of Toyota’s subscription service as commercial success. Id. at 42 (citing Ex. 2050). That does not establish “commercial success” as objective evidence of nonobviousness. Patent Owner does not provide information regarding sales volume or market share information as compared to providers of competing products. Even the number of units sold, without market share information, is only weak evidence, if any, of commercial success. See In re Applied Materials, Inc., 692 F.3d 1289, 1299. (Fed. Cir. 2012). Furthermore, Patent Owner has not even attempted to show a nexus between any sales and the merits of the claimed invention. Although Patent Owner references several claim limitations, there is no explanation as to how these limitations are related to the alleged commercial success of the claimed invention other than simply alleging that the limitations are present in Toyota’s 12EDR device. See PO Resp. 40–42. For example, Patent Owner simply alleges that “vehicles equipped with Toyota’s 12EDR system in combination with Safety Connect systems are covered by at least claims 1–3, 5–7, 18–20 and 22–24 of the ‘917 Patent.” Id. at 42 (emphasis added). Patent Owner’s general allegation of “a strong nexus between Toyota’s sales of EDR/ACN-equipped vehicles and the claims of the ’917 Patent” because “[a]bsent infringement of at least claims 18 and 24 of the ’917 Patent, Toyota would be unable to equip its vehicles with both an event data recorder compliant with the EDR Regulations and the automatic collision notification functionality of its Safety Connect system” (id. at 43) is also unpersuasive. Initially, we note that Petitioner disputes Patent Owner’s claim that Toyota infringes claims 18 and 24 of the ’917 patent. Pet. Reply 13. We further note that, in this proceeding, Patent Owner has not established the alleged infringement. Nevertheless, “[e]vidence of commercial success, or other secondary considerations, is only significant if there is a nexus between the claimed invention and the commercial success.” Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006). To show how commercial success supports nonobviousness, Patent Owner must prove that the sales were a direct result of the unique characteristics of the invention, and not a result of economic and commercial factors unrelated to the quality of the patented subject matter. Applied Materials, 692 F.3d at 1299–1300. Patent Owner, however, fails to provide sufficient proof of such a relationship between any alleged sales and the unique characteristics of the invention.” slip op. at 17
Patent outcomesUS 8,014,917 unpatentable§ 103 obviousnesscites PhillipsPatents in suitUS 8,014,917 - Toyota Motor Corporation v. American Vehicular Sciences LLCAll claims unpatentablePTAB · Dec 5, 2014 · IPR2013-00416 · APJ Barbara A Parvis · IPR · Final written decision
Claims 1, 4–10, 17, and 18 are unpatentable as anticipated by Probst and obvious over Scholl and Probst.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“AVS’s arguments are based in part on an improper limiting of the term “patterns” to exclude trends. We construe the term “pattern” to aid in the evaluation of the arguments presented by AVS regarding Scholl. The specification of the ’501 patent uses the term “pattern” in its description of pattern-recognition technology. In particular, according to the ’501 patent specification, detection of patterns is performed on time series data emitted by the sensors. Ex. 1001, 16:18–24. The ’501 patent specification describes various patterns that pattern recognition technology detects. For example, the ’501 patent specification states “[i]n some cases, the frequencies present in a set of data are a better predictor of component failures than the data itself.” Ex. 1001, 16:54–55 (emphasis added). Additionally, according to the ’501 patent specification, “[i]t is worth emphasizing that in many cases, it is the rate that a parameter is changing that can be as or more important that the actual value in predicting when a component is likely to fail.” Id. at 14:34–37 (emphasis added). Furthermore, the ’501 specification states: “[t]he pattern recognition algorithm thereby detects trends or patterns in the time series received from the sensors.” Ex. 1001, 18:29–30 (emphasis added). As used in the ’501 patent specification, therefore, “pattern” is a frequency of occurrences of certain data present in a set of data, a rate of change of data, or a trend of data. For the reasons discussed above, we construe “pattern” as a frequency of occurrences of certain data present in a set of data, a rate of change of data, or a trend of data. 3.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“AVS’s contention is inconsistent with the specification of the ’501 patent. In particular, the ’501 patent contemplates that prediction of a failure of one of the components or subsystems encompasses failures due to the manner in which the operator is operating the vehicle, or driver error. Ex. 1001, 15:38–40. One example provided in the ’501 patent is predicting accelerated failure due to a driver driving at a speed higher than appropriate for a low gear. Id. at 15:38–44. As an additional example, the ’501 patent specification describes predicting a rollover due to high speed. Id. at 26:21– 25. The ’501 patent describes a further exemplary failure that occurs because of how an operator operates a vehicle, by stating “a failure mode can be designed into the mechanism [to enable a restorable system] . . . when the tire goes flat as, for example, when a nail [] punctures the tire.” Id. at 76:19–23. A nail puncturing a tire is often due to a driver driving over a nail. AVS’s contention also is inconsistent with other language recited in claim 1. In particular, claim 1 recites, “whereby a breakdown of the vehicle that might occur if the predicted failure of the component were to occur is thereby avoided” (emphasis added). According to claim 1, breakdown of a vehicle is a possibility, but not a certainty when a component fails. AVS does not describe persuasively how one of ordinary skill in the art would understand what types of functions are “normal” in the context of the claim and the ’501 patent specification. The exemplary failures described in the ’501 patent specification, such as a vehicle rollover or a flat tire, are simply states of inability of a component, a wheel or a tire, respectively, to perform a function that the component was designed to do.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Whether Probst Meets the Limitations of Claims 1, 6–8, 17, and 18 Toyota’s claim charts persuasively read all elements of each of claims 1, 6–8, 17, and 18 onto the disclosure of Probst. Pet. 27–34 (citing Ex. 1003, Abstract, 1:10–29, 1:45–54, 1:67–2:29, 2:42–48, 3:9–15, 4:25–68, 5:30–37, 6:6–15, Fig. 1). For instance, claim 1 recites a method for predicting impending failures. As Toyota correctly asserts, Probst is directed to a process for determining the operating condition of a vehicle, including “imminent critical operating conditions.” Pet. 25-26 (citing Ex. 1003, Abstract). Additionally, claim 1 requires analyzing detected patterns in obtained sensor data to create a prediction of an impending failure of one of the components or subsystems. Toyota correctly notes that Probst’s diagnostic process entails generating a pattern based on sensor signals and comparing this pattern with preset patterns to determine when the limit pattern for a critical operating condition is approached. Id. at 26 (citing Ex. 1003, Abstract; col. 1, ll. 36-54; col. 2, ll. 24-30; col. 4, ll. 62-68; col. 5, ll. 22-59; col. 6, ll. 19-29). Exemplary sensor data that is monitored includes a pressure sensor that determines loading of a chassis spring of the motor vehicle. Id. at 28 (citing Ex. 1003, 1:67–2:7). Regarding recitation in claim 1 of informing the user about the predicted failure, Toyota also correctly notes that Probst describes warning a user of the vehicle. Pet. 26, 31-32 (citing Ex. 1003, col. 1, ll. 24-29; col. 2, ll. 42-46; col. 4, ll. 62-68).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Whether Toyota Has Satisfied the Requirements for Combining Scholl and Probst As indicated above, we determine that Toyota has articulated sufficient reasoning with a rational underpinning as to why one of ordinary skill in the art would combine the technique of directing predicted failure information through a satellite transceiver, as described in Scholl, into the failure prediction system of Probst. See KSR, 550 U.S. at 398. Additionally, in light of the contentions and evidence presented by Toyota, we find that modifying Probst’s disclosure of indicating to the user of the vehicle when the vehicle approaches a critical condition with Scholl’s disclosure of transmitting indications of faults to a remote location is no more than a predictable use of familiar prior-art elements according to their established functions, therefore rendering the recited invention obvious. See KSR, 550 U.S. at 417. In particular, Toyota relies on the declaration of its expert, Mr. Andrews, who states that one of ordinary skill in the art at the time of the invention would have been motivated to use Scholl’s satellite transceiver with Probst’s failure prediction system. Pet. 42 (citing Ex. 1007 ¶¶ 121–24). Mr. Andrews states that Scholl explains that transmissions to dealers, manufacturers, and owners allow for maintenance, generation of repair instructions, or the development of future diagnostics and prognostics by a vehicle manufacturer. Ex. 1007 ¶ 122 (citing Ex. 1002, 1:12–18, 2:58–68, 6:55–60). Mr. Andrews also states that one of ordinary skill in the art would have understood in June 1995 that Probst’s warning measures could extend to transmission of information relating to predicted failures to remote entities. Id. ¶ 124. We find that the testimony of Toyota’s expert is consistent with the disclosure of Scholl and Probst. For example, Mr. Andrew’s testimony regarding Scholl’s explanation of benefits for transmitting to dealers, manufacturers, and owners is consistent with the disclosure of Scholl. See, e.g., Ex. 1002, 6:56–60 (“[T]he present invention provides a method for relaying information between a vehicle and a remote location . . . [that] is used to perform diagnostics and prognostics, to generate repair instructions, and in the development of future diagnostics and prognostics.”). Additionally, we credit Mr. Andrews’s testimony (Ex. 1007 ¶ 124) because modifying Probst’s disclosure of warning measures (Ex. 1003, 4:62–68) with Scholl’s disclosure of transmitting indications of faults to a remote location (Ex. 1002, 4:8–26) is no more than a predictable use of familiar prior art elements according to their established functions, therefore rendering the recited invention obvious. See KSR, 550 U.S. at 417.” slip op. at 22
Patent outcomesUS 8,019,501 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,019,501 - PTAB · Dec 3, 2014 · IPR2014-00541 · APJ Josiah C Cocks · IPR · Order
The Board granted the joint motion to terminate the review as to both parties without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” The requirement for terminating review with respect to Wintek is met. Furthermore, under 35 U.S.C. § 317(a), “[i]f no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).” Wintek is the sole petitioner in this review. The Board has discretion to terminate this review with respect to TPK. Upon consideration of the circumstances of this case, the panel has determined to terminate this inter partes review as to both Wintek and TPK without rendering a final written decision. The oral argument scheduled for December 12, 2014 is cancelled.” slip op. at 3
- ExcludeOther
“TPK’s Motion to Seal (Paper 28) is pending. Because this proceeding is terminated without rendering a final written decision, the Motion to Seal is dismissed as moot. The subject paper (Ex. 2019) of the Motion to Seal is hereby expunged.” slip op. at 3
NonePatents in suitUS 8,217,902 - Trivascular, Inc. v. Shaun L.W. SamuelsNo claims unpatentablePTAB · Dec 3, 2014 · IPR2013-00493 · APJ Richard E Rice · IPR · Final written decision
Claims 1, 2, and 4–24 were not shown unpatentable over either instituted §103 combination because the references did not establish the required inflatable protrusions.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
“not proved that claims 1, 2, 6–15, and 18–24 would have been obvious over Samuels ’851 and Todd, or that claims 1, 4–6, 9–11, 13, 14, 16, 17, and 19– 21 would have been obvious over Lazarus and Todd. Accordingly, Dr. Samuels’s Motion to Amend, which is contingent on claims 1, 14, and 23 being found unpatentable, is moot. IV. ORDER For the reasons given, it is ORDERED that claims 1, 2, and 4–24 of U.S. Patent No. 6,007,575 are not determined to be unpatentable; and FURTHER ORDERED that Dr. Samuels’s Motion to Amend is dismissed as moot.” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“TriVascular argues that “inflatable protrusions can be ‘solid’ structures such as barbs or[,] in the case of [] some of the prior art examples, solid circumferential ridges.” Reply 10 (citing Clark. Dep., Ex. 1021, 135:6–16 (discussing Samuels ’851 (Ex. 1002))). TriVascular’s proposed claim construction, however, does not accord with the plain meaning of “inflatable” as used in the Specification, i.e., expandable by being filled with fluid. See, e.g., Ex. 1001, Abstr. 3–4, 3:55 (“inflatable chamber”), 1:30 (“inflatable balloon”), 2:33, 38, 3:30 (“inflatable cuff”), 3:33–34 (“inflatable ridges”). Under the plain meaning of “inflatable” as used in the Specification, solid ridges are not “inflatable,” because they are not capable of being filled with fluid. See Resp. 5–8; In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (holding that the words of the claim must be given their plain meaning unless the plain meaning is inconsistent with the specification). Further, under TriVascular’s proposed claim construction, there is no meaningful difference between “protrusions” disposed on an inflatable cuff and “inflatable protrusions” disposed on an inflatable cuff. See Tr. 10:7–14. Trivascular’s proposed claim construction, therefore, fails to give any meaning to “inflatable” in “inflatable protrusions,” and by not giving effect to all words of the claim, runs afoul of a cardinal rule of claim construction. See Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (“[C]laims are interpreted with an eye toward giving effect to all terms in the claim,” so that physical structures and characteristics described specifically in a claim are not rendered “merely superfluous.”).” slip op. at 7
- Expert testimonyPetitioner expert discountedOther
“inflatable balloon protuberances, including “inflatable ridges.” Pet. 22 (citing Ex. 1008, Figs. 5–9), 41 & 51 (claim chart) (quoting Ex. 1008, 7:35– 39, citing Ex. 1008, Fig. 7). At oral argument, TriVascular clarified its analysis of Todd’s disclosure, and asserted that the protuberances disclosed in Todd are hollow, and themselves inflatable. Tr. 6:5–12:20. TriVascular cited in support of its position the statement in column 7 of Todd that: “When inflated, the spiral ridge 48 contacts and tightly grips the walls of a body passageway in which it is inserted.” Id. at 6–7; Ex. 1008, 7:37–39 (emphasis added); see Pet. 40–41 (Claim Chart II, element 1a-3, quoting Ex. 1008, 7:35–39). TriVascular, however, has not provided a declaration, or any other evidence, to establish that a person of ordinary skill in the art would understand Todd to disclose protuberances that are hollow, and themselves inflatable. Dr. Samuels does not agree that Todd discloses “inflatable protrusions.” Resp. 12. Dr. Samuels asserts that “the region between the inner and outer surfaces of balloon 26 of Todd is solid . . . and any provided roughened surfaces or protuberances are also solid.” Id. (citing Ex. 1008, Figs. 4 & 8; Ex. 2004). On the record before us, TriVascular has failed to show that Todd discloses “inflatable protrusions,” i.e., protrusions that are expandable by being filled with fluid. See section II.A.5 supra. The protuberances disclosed in Todd project outwardly “from the outer surface” of inflatable balloon 26. See Ex. 1008, 6:58–59, 62–63. As such, the protuberances are disposed on the exterior surface of the inflatable balloon, and are not in fluid communication with the balloon’s inner chamber 32. See Resp. 12; Ex. 1008, 7:15–16, Figs. 2, 4 & 5 (describing knobs 40 as solid structures on the outer surface of the balloon), 7:32–34, Fig. 6 (describing “cross-hatched pattern 44 projecting outwardly from the exterior surface of balloon 26”), 7:35–39, Fig. 7 (describing “outwardly projecting spiral ridge 48 wound about the exterior surface of balloon 26”), 7:40–46, Fig. 8 (describing “outwardly projecting annular rings 52 wound about the exterior surface of balloon 26”). Todd discloses expansion means in fluid communication with inner chamber 32 for inflating balloon 26 (id. at 7:53–60), but does not disclose expansion means for inflating the protuberances, either separately or in conjunction with inflation of the balloon. Todd discloses, simply, that “when balloon 26 is inflated, the gripping means [i.e., the protuberances] on the exterior of the balloon contact and grip the walls of the body passageway.” Id. at 8:14–16. Trivascular has not persuaded us, moreover, that a person of ordinary skill in the art would have understood Todd’s statement “[w]hen inflated, the spiral ridge 48 contacts and tightly grips the walls of a body passageway in which it is inserted” (id at 7:37–39 (emphasis added)), to teach or suggest that spiral ridge 48 is expandable by being filled with fluid. See Tr. 6–7. Other than that isolated statement, there is no suggestion, indication, or hint in Todd that any of the disclosed protuberances is hollow such that it can be filled with fluid and inflated. To the contrary, as discussed above, Todd” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“We determine that Trivascular has not provided a sufficient rationale to support substituting the ridges of Todd for just the barbs of Samuels ’851. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). TriVascular also contends that it would have been obvious to eliminate both the recesses and barbs of Samuels ’851, and to substitute “a circumferential ridge, similar to the one that is in Todd.” See Tr. 15:24– 17:15. TriVascular asserts three reasons why combining the references in that fashion would satisfy the requirement for “inflatable protrusion(s) including at least one circumferential ridge disposed about the inflatable cuff”: (1) the ridges are “inflatable” in the combination simply because they are riding on an inflatable cuff; (2) the ridges in Todd are themselves inflatable; and (3) use of ridges that are themselves inflatable would have been obvious, as they would take up less volume and be easier to insert in blood vessels than ridges that are not themselves inflatable. See id. at 17:16–18:14. None of those reasons is persuasive. The first reason is not persuasive because it does not satisfy the requirement for “inflatable protrusions,” i.e., protrusions that are expandable by being filled with fluid. See section II.A.5 supra. The second reason is not persuasive because we do not agree that Todd discloses ridges that are themselves inflatable. See section II.B.1.b supra. Lastly, the third reason is not persuasive because TriVascular has not established that a person of ordinary skill in the art would have known to use, on an inflatable cuff, circumferential ridges that are themselves inflatable. The evidence is to the contrary. See, e.g., Ex. 2002 (Samuels Decl.) ¶ 4.c (“No one else in the medical field, to the best of my knowledge, ever proposed or suggested an inflatable ridge-based sealing arrangement prior to my invention, ever.”); Ex. 1020 (Samuels Dep.), 138:20–140:7 (affirming testimony in ¶ 4.c of Samuels Decl.), 187:11–14 (testifying that inflatable ridges were not known in the medical field); Ex. 2003 (Clark Decl.) ¶ 8 (“[B]eing able to reduce the overall diameter by just deflating the fluid chamber and, correspondingly, the ridges is an intriguing concept, one which was not known, to the best of my knowledge, in the medical field prior to Samuels ’575.”); Ex. 1021 (Clark Dep.), 82:19–21 (“I’m not aware of any inflatable protrusions to support an endograft prior to Samuels [’575].”).” slip op. at 19
Patent outcomesUS 6,007,575 not shown unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 6,007,575
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.