• Alcon Inc. / Alcon Vision, LLC et al. v. Amo Development, LLCNo claims unpatentable
  PTAB · Oct 26, 2022 · IPR2021-00835 · APJ Sheridan K Snedden · IPR · Final written decision

  Claims 1–24 were not shown unpatentable because the asserted obviousness combinations did not establish the claimed image-processing control system or a sufficient basis to adapt the cited systems for lens surgery.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “The parties present compelling evidence that one of ordinary skill in the art would include those with experience in ophthalmology, as well as in the research, manufacture, and design of medical optics or medical lasers. Pet. 24; PO Resp. 10–11. The evidence of record also demonstrates that few individuals actually had such comprehensive experience. Rather, teams of individuals with different expertise and various academic degrees (Ph.D.s, B.S.s, and M.D.s) would work together to design laser surgery systems intended to make incisions in the lens of the eye. See, e.g., Ex. 1041 (several authors are MDs); Ex. 1042 (the authors’ degrees include Ph.D.s, an M.D., and a B.S.); see also Ex. 1053; Ex. 1054; Ex. 1055; Ex. 2010; Ex. 2019. Thus, we find that the person of ordinary skill in the art would have been either an ophthalmic surgeon or someone with a Ph.D., M.S., or B.S. degree in physics, biomedical engineering, or a related science such as nuclear engineering, having experience in researching, manufacturing, or designing medical optics or medical lasers (e.g., 5 years of experience for a Ph.D. or more to compensate for lesser degrees), and that such persons would have worked in collaboration with one another to fill any necessary gaps in knowledge (e.g., the engineer would consult the medical doctor on clinical issues or physiology and the medical doctor would consult the engineer on technical issues). This definition marries the two proposed by the parties.” slip op. at 11

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

    “Petitioner does not assert that any claim term requires express construction. See Pet. 7 (stating that it “reserves the right to respond to any constructions that [Patent Owner] submits”). Patent Owner does not present any remarks regarding claim construction. See, generally, PO Resp. On this record, we determine that no claim terms require express construction. See Nidec, 868 F.3d at 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)). To the extent further discussion of the meaning of any claim term is necessary to our decision, we provide that discussion below in our analysis of the asserted grounds of unpatentability.” slip op. at 13

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

    “We recognize Petitioner’s argument that the use of a controller for determining an anterior capsulotomy scanning pattern would have been “nothing more than automating a manual activity using well-known components (e.g., controllers and algorithms) in predictable ways, which would have been obvious to a [person of ordinary skill in the art]” because a controller would be programmed to determine automatically scanning patterns once the boundaries of the ocular tissue are identified. Pet 32 (citing Ex.1001 ¶ 181; MPEP 2144.04; In re Venner, 262 F.2d 91, 95 (CCPA 1958)); Reply 5–6. We also recognize Petitioner’s argument that “[t]he prior art teaches that integrating diagnostic imaging and treatment functionalities in a single automated system is not only desirable, but also straightforward.” Pet. 30 (citing Ex. 1001 ¶ 150); see also Reply 7–8 (quoting Venner, 262 F.2d at 95 (“[I]t is well settled that it is not ‘invention’ to broadly provide a mechanical or automatic means to replace manual activity which has accomplished the same result”); citing Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (updating mechanical invention with modern electronics is understood in the art)). Having considered the parties positions and evidence of record, however, we find that the evidence of record does not support a conclusion that it would have been simple, straightforward, or otherwise routine to convert Swinger’s manual HeNe aiming system and Swinger’s surgeon-identification-of-target-tissue step to an automated, OCT-guided laser system. We provide further analysis below.” slip op. at 28

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Inter partes review must proceed in accordance with the Petition and the arguments set forth therein. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018). “It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the ground for the challenge to each claim.’” Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016). Arguments made in a different document, such as an expert’s declaration, may not be incorporated-by-reference in the Petition. 37 C.F.R. § 42.6(a)(3); see also General Access Solutions, Ltd. v. Sprint Spectrum L.P., 811 F. App’x 654, 658 (Fed. Cir. 2020) (noting that the Board did not abuse its discretion in enforcing its rules under 37 C.F.R. § 42.6(a)(3)) (non-precedential).” slip op. at 40

  Patent outcomesUS 9,095,415 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 9,095,415
• Carrier Fire & Security Americas Corporation v. Sentrilock, LLCSome claims unpatentable
  PTAB · Sep 14, 2022 · IPR2021-00664 · APJ Ryan H Flax · IPR · Final written decision

  Claims 23, 24, 28, 29, 35, 37, and 39–47 are unpatentable as obvious over Mosgrove, Harold, and Imran; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “ORDINARY SKILL IN THE ART Petitioner proposes that a person of ordinary skill in the art would have been “a person with at least a Bachelor’s degree in Electronics, Electrical, or Mechanical Engineering or related discipline, [and/]or at least three years of experience working with access control devices.” Pet. 8 (citing Ex. 1002 ¶ 19).10 Such a person of ordinary skill in the art could have both this level of education and experience without straying from Petitioner’s definition. Patent Owner neither contests Petitioner’s proposed definition of the ordinarily skilled artisan nor proposes an alternative. See generally Resp. Patent Owner’s witness, however, expressly adopts Petitioner’s definition. Ex. 2015 ¶ 20. We likewise adopt Petitioner’s proposed definition of the level of ordinary skill in the art and apply it here.11 hindsight, and is biased in favor of Petitioner because of employment history, and, hence, we should give his testimony “no weight.” See Resp. 9– 19. We do not agree with Patent Owner’s positions. The evidence shows that Mr. Comerford is qualified to testify on the issues in this proceeding, and we find his opinions are based on his understanding of the perspective of the ordinarily skilled artisan, his experience, the ordinary meaning of claim terms, and the disclosures of the prior art, are supported by evidence, and do not rely on the ’541 patent as a roadmap so as to infect his opinions with improper hindsight. See generally Ex. 1002; Ex. 1028; Ex. 1029. 10 We understand Petitioner’s proposed definition of the ordinarily skilled artisan to be inclusive regarding education and experience because such is reflected in Mr. Comerford’s cited testimony. See Ex. 1002 ¶ 19 (“I am such a person.”). 11 The parties use the acronym POSA to refer to the person of ordinary skill in the art. See generally Pet.; Resp.” slip op. at 12

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

    “Petitioner states that “[f]or purposes of this IPR, Petitioner does not believe any claim term requires a construction in order to resolve if the Challenged Claims are unpatentable based on the prior art presented.” Pet. 21. Patent Owner indicates it agrees with Petitioner “that the terms of the Challenged Claims should be understood as written.” See Resp. 6–7. We agree with the parties and determine that no claim term requires express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only claim terms that are in controversy need to be construed and “only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review). C.” slip op. at 13

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “In order to gain the benefit of the filing date of an earlier application under 35 U.S.C. § 120, each application in the chain leading back to the earlier application must comply with the written description requirement of 35 U.S.C. § 112.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571 (Fed. Cir. 1997); see also 35 U.S.C. § 119(e)(1) (benefit of provisional application’s filing date requires disclosure of claimed invention “in the manner provided by the first paragraph of section 112”); Dynamic Drinkware, 800 F.3d at 1381–82 (“A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.”). “Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed. It extends only to that which is disclosed.” Lockwood, 107 F.3d at 1571–72. We agree with Petitioner that the ’773 provisional does not describe the key identification tag/device required by all claims so as to satisfy § 112. Such a component is described by the ’400 patent as the RFID tag. See Ex. 1006, Fig. 5 (element 74). The ’773 provisional, on the other hand, describes nothing that could be considered the claimed key identification tag or device “for attachment to the at least one key” as recited by claim 23 or “attaching a key identification device to a key” as recited by claim 45. Ex. 1002, 23:1–5, 24:32–35. Nothing in the ’773 provisional hints that anything, be it a tag or generic device, is attached to its otherwise disclosed key; therefore, we cannot agree with Patent Owner’s arguments. See generally Ex. 1005. The ’773 provisional merely indicates that a key can be contained in, removed from, and replaced in a key container module that can somehow sense the key’s presence, but provides no description as to how this sensing is accomplished, and certainly does not describe that anything attached to the key allows this sensing. Id. ¶ 4. slip op. at 16

  • Strike new argumentNew argument disregardedDecided for patent owner

    “In our Trial Practice Guide we explain that a “[p]etitioner may not submit new evidence or argument in [a] reply that it could have presented earlier, e.g.[,] to make out a prima facie case of unpatentability.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 73 (Nov. 2019)14 (“CTPG” or “Trial Practice Guide”) (citing Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1077–78 (Fed. Cir. 2015)). The Trial Practice Guide further explains that “‘[r]espond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing,” and “[w]hile replies and sur-replies can help crystalize issues for decision, a reply or sur-reply that raises a new issue or belatedly presents evidence may not be considered.” Id. at 74. “In most cases, the Board is capable of identifying new issues or belatedly presented evidence when weighing the evidence at the close of trial, and disregarding any new issues or belatedly presented evidence that exceeds the proper scope of reply or sur-reply.” CTPG 80 (Nov. 2019). The Board has regularly shown this capability. See Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (The Board refusing to consider reply brief arguments advocating a “new theory” of unpatentability under 37 C.F.R. § 42.23(b)); Apple Inc. v. e-Watch, Inc., IPR2015-00412, Paper 50, 44 (PTAB May 6, 2016) (“Accepting . . . 14 Available at www.uspto.gov/TrialPracticeGuideConsolidated. belatedly presented new arguments would be unjust to the Patent Owner and we decline to do so.”). Thus, we find any suggestion by Petitioner that Mosgrove’s entire key container or key compartment is the conductive container of Diaferia is a new and late argument, which we will not consider. Likewise, we find any suggestion by Petitioner that some sort of wire or cable (or something of that nature) might be used to connect a key put inside a conductive container to a key tag that is outside that conductive container so that the tag might be inserted into a key-sensing circuit is also a new and late argument, which we will not consider.” slip op. at 30

  Patent outcomesUS 7,949,541 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 7,949,541
• Edwards Lifesciences Corporation / Edwards Lifesciences LLC v. Aortic Innovations, LLCInstitution denied
  PTAB · Sep 6, 2022 · IPR2022-00549 · APJ John G New · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–9, 11, and 12 were obvious over the asserted grounds.

  RulingsInstitution decision

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

    “review to be instituted unless … the information presented in the petition … and any response … shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Having considered the Petition, the Preliminary Response, the Supplemental and Reply Briefs, and the evidence of record, we determine that the evidence presented fails to demonstrate a reasonable likelihood that” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A Person of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have been an interventional cardiologist with a working knowledge of heart valve designs and endovascular prostheses. Pet. 30. Petitioner contends that such a skilled artisan would, when necessary, work as a member of a team in combination with a medical device engineer to experiment with, or manufacture, a prosthetic heart valve. Id. (citing Ex. 1003 ¶ 45). Patent Owner does not argue otherwise. See generally Prelim. Resp. Decision, we adopt Petitioner’s definition because we find that that definition is consistent with the level of skill reflected by the prior art. See generally, e.g., Exs. 1007, 1010, 1011, 1012; see also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 11

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

    “used to construe the claim in a civil action under 35 U.S.C. § 282(b). See 37 C.F.R. § 100(b) (2020). Under that standard, claim terms “are generally given their ordinary and customary meaning” as understood by a person of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). “In determining the evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Extrinsic evidence is “less significant than the intrinsic record in determining ‘the legally operative meaning of claim language.’” Phillips, 415 F.3d at 1317 (quoting C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004)). Neither Petitioner nor Patent Owner proposes a construction for any claim terms apart from their plain and customary meaning. Pet. 30; see generally Prelim. Resp. Nor do we perceive a need to construe any claim terms of the ’735 patent for purposes of determining whether to institute trial. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 295, 803 (Fed. Cir. 1999) (holding that “only those terms need to be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 10

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

    “Petitioner argues additionally that “POSITAs were motivated to routinely adjust the size and shape of outer cloths to maximize sealing while minimizing the profile of the valve.” Pet. 52. Even accepting that, however, does not provide an adequate motivation to modify Walther’s valve in a way that would result in the claimed valve. Petitioner has not shown, for example, that the small reduction possible in the outer cloth (which protruded below the native valve no more than 2 mm) would have meaningfully minimized the Walther’s valve profile. Accordingly, we determine that Petitioner has not adequately justified modifying Walther’s valve such that the apices extend proximally beyond the outer cloth. Having found that Walther, upon which Petitioner relies, neither teaches nor suggests the limitations at issue, we are consequently not persuaded that Petitioner has established a reasonable likelihood of success in prevailing at trial on Grounds 1 and 2.” slip op. at 19

  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 11,129,735
• Dexcom, Inc. v. Abbott Diabetes Care Inc.Institution denied
  PTAB · Jul 27, 2022 · IPR2022-00637 · APJ Cynthia M Hardman · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that claims 1–25 were obvious over either asserted combination.

  RulingsInstitution decision

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

    “III. Conclusion After considering the evidence and arguments of record, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any claim challenged in the Petition.10 Accordingly, we do not institute an inter partes review. IV. Order In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied as to all challenged claims, and no trial is instituted.” slip op. at 24

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

    “Regarding a motivation to replace Gravesen’s lever with Yodfat’s cylindrical rotor, Petitioner argues that (1) “[t]he ’440 patent does not describe any benefit conferred by the claimed cylindrical rotor shape,” and (2) cylindrical rotors and levers were “similar solution[s]” for translating a torsion spring’s rotation to linear movement of an inserter. Pet. 96, 99; Ex. 1035 ¶¶ 219, 233, 234. On this record, Petitioner’s contentions amount to little more than a statement that cylindrical rotors were known in the prior art. As stated in KSR, however, “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR Int’l Co., 550 U.S. at 418. Rather, Petitioner must demonstrate that “there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. While it may have been technically feasible for a person of ordinary skill in the art to substitute Yodfat’s cylindrical rotor for Gravesen’s lever to achieve linear movement, “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Standing alone, Petitioner’s allegation of interchangeability of a cylindrical rotor and a lever to effect linear movement of an inserter is insufficient to provide a reason to combine. Petitioner also contends that a person of ordinary skill in the art “would have recognized the utility of a cylindrically shaped rotor for positioning Gravesen’s driving spring 215 to provide both insertion force and at least some retraction force.” Pet. 96 (citing Ex. 1008 ¶ 124; Ex. 1004 ¶ 8). In Petitioner’s obviousness combination, however, separate driving springs effect insertion and retraction. See, e.g., id. at 52–53 (arguing that rotation of lever 211 operates to insert the needle), 46 (arguing that torsion spring 215 rotates lever 211), 58–59 (arguing that retraction spring 22 operates to retract the needle).8 Indeed, Petitioner contends that separating the operation of the insertion and retraction springs advantageously reduces the weight of the retraction apparatus, and thus the pain experienced by the subject. See id. at 24, 59; Ex. 1035 ¶¶ 57, 114. Thus, on this record, Petitioner’s proffered motivation to use Yodfat’s cylindrical rotor to drive a spring for “both insertion force and at least some retraction” (Pet. 96) conflicts with the two-spring embodiment of Gravesen that is the basis for Petitioner’s obviousness argument. See Prelim. Resp. 58; Ex. 2001 ¶ 117.” slip op. at 18

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

    “and does not offer any express claim constructions. Pet. 17. Patent Owner also does not offer any express claim constructions, but disputes Petitioner’s understanding of the terms “rotor” and “recess.” Prelim. Resp. 21–22, 49, 51–53. For purposes of institution, we conclude that we need only address the term “recess.” We do so below in the context of analyzing Petitioner’s obviousness challenge based on Gravesen and Brister. See supra Section II.C.4; see also Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9

  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 11,013,440
• Autostore System Inc. v. Ocado Innovation LimitedInstitution denied
  PTAB · Jul 20, 2022 · IPR2022-00443 · APJ Richard H Marschall · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–18 were unpatentable over Hognaland, alone or with Lert.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the evidence and arguments in the record, we decline to institute inter partes review of the ’602 patent.” slip op. at 2

  • Skill levelOther

    “We note that the parties’ respective proposals overlap considerably, with Petitioner’s alternative proposal nearly identical to Patent Owner’s proposal. We need not resolve which proposal most closely aligns with the level of ordinary skill in the art here, however, because even if we adopt Petitioner’s proposal we would come to the same ultimate conclusion that Petitioner has failed to satisfy its burden of showing a reasonable likelihood of establishing the unpatentability of any of the challenged claims.” slip op. at 9

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

    “occupy a grid space.” Pet. 32–39. Patent Owner proposes different constructions for both terms. Prelim. Resp. 26–30. The “wheel hub motor” limitation only appears in dependent claims and we need not reach the merits of Petitioner’s allegations as to those claims in order to determine whether to institute an inter partes review. See id. at 29. Accordingly, we do not address the merits of the parties’ claim destruction dispute as to “wheel hub motor.” See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). slip op. at 10

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

    “adequately that Hognaland discloses either the No Obstruction limitation or the No Extension limitation. As to the No Obstruction limitation, Petitioner premises its argument on the assertion that Hognaland discloses a vehicle occupying only one grid space, but the only embodiment Hognaland discloses shows a vehicle occupying portions of two adjacent spaces that obstruct those spaces in the Y-direction and fail to meet the requirements of the No Obstruction limitation. See Pet. 56–58; Ex. 1005, 2:38–3:3, Fig. 9. Petitioner’s reliance on other text in Hognaland that allegedly “implies” that Hognaland discloses a device with no obstructions in the Y-direction lacks adequate support. For example, Petitioner relies on Hognaland’s statement that the wheels can be placed on the lower corners of the vehicle and that alterations may enable smaller-sized robots. Pet. 57 (citing Ex. 1005, 3:9– 12, 4:31–32). Placing wheels near the lower corners of the vehicle merely describes the existing Hognaland device shown in Hognaland’s figures, a device that fails to meet the claim limitations. See Ex. 1005, 3:9–12. Neither this description of Hognaland’s device nor the general statement that Hognaland’s approach enables smaller-sized robots, taken alone or together, suggest an express or inherent disclosure of an embodiment without any obstruction of adjacent grid spaces in the Y-direction that meets the No Obstruction limitation.” slip op. at 16

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 10,913,602
• BJ Energy Solutions, LLC v. Yantai Jereh Petroleum Equipment & Technologies Co., Ltd.Institution denied
  PTAB · Sep 7, 2021 · PGR2021-00060 · APJ Ryan H Flax · PGR · Institution

  The Board denied institution because the petition did not show claims 1–7 likely unpatentable, and a possible § 112(a) issue for claims 8–9 did not justify instituting on all claims and grounds.

  RulingsInstitution decision

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

    “not demonstrated with particularity that it is more likely than not that most claims challenged in the petition are unpatentable under the asserted grounds. Although there is a reasonable argument that claims 8 and 9 may be unpatentable under 35 U.S.C. § 112(a), as discussed above, this analysis is applicable to only these two dependent claims under a single ground for unpatentability, leaving Petitioner’s other ten grounds insufficient regarding independent claim 1 and dependent claims 2–7. As discussed above, instituting trial under these circumstances would not be an efficient use of the Board’s or the parties’ time and resources. See Chevron, IPR2018- 00923, Paper 9, 10–11; Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7, 41–43 (PTAB Jan. 24, 2019) (informative). Our decision at this stage derives from our review of the record presented. In accordance with the Court’s decision in SAS (138 S. Ct. at 1359– 60) and Office guidance, we deny institution of a post-grant review of the challenged claims of the ’631 patent on any grounds alleged by Petitioner. This decision does not reflect a final determination on the patentability of any claim.” slip op. at 66

  • Other 314aInstitution denied discretionary otherInstitution denied

    “Even when a petitioner satisfies the minimum statutory institution standard (e.g., demonstrating a reasonable likelihood of prevailing with respect to one or more claims in an inter partes review or that it is more likely than not that at least one claim is unpatentable in a post-grant review), institution of review remains discretionary. SAS Inst. v. Iancu, 138 S. Ct. 1348, 1356 (2018); Harmonic, Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“First of all, the PTO is permitted, but never compelled, to institute an IPR proceeding.”). Under such circumstances, the Board takes into account other considerations, including efficiency and fundamental fairness for all parties. See Adaptics Limited v. Perfect Co., IPR2018-01596, Paper 20 at 17 (PTAB Mar. 6, 2019) (informative); Chevron Oronite Co. LLC v. Infineum USA L.P., IPR2018-00923, Paper 9 (PTAB Nov. 7, 2018) (informative); see also Consolidated Trial Practice Guide, 84 FR 64280, 53– 63 (2019) (addressing various considerations at institution phase, including efficiency and fundamental fairness for all parties).1 We conclude that Petitioner has not demonstrated in the petition that it is more likely than not that challenged claims 1–7 are unpatentable under any asserted grounds for unpatentability. Although it is a closer question as to whether Petitioner has demonstrated it is more likely than not that dependent claims 8 and 9 are unpatentable based on a single asserted unpatentability ground under § 112, we determine based on the record here that instituting a trial with respect to all challenged claims under all eleven asserted grounds for unpatentability is not an efficient use of the Board’s or the parties’ time and resources. Therefore, we do not institute post-grant review pursuant to 35 U.S.C. § 324. See SAS, 138 S. Ct. at 1359–60 (requiring institution on all claims, if any); see also Consolidated Trial Practice Guide, 55 (providing guidance in view of SAS).” slip op. at 2

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

    “to read the concept of “flush with” into the claims. We agree with Petitioner’s position that such an interpretation is not supported by the ’631 patent’s written description, which illustrates and describes two embodiments, each having a turbine engine and reduction gearbox configured to be flush with one another, but refers to only the configuration of Embodiment 1 as being “directly connected” and refers to the configuration of Embodiment 2 as being merely “connected.” See Ex. 1001, 5:27–28, 5:62–6:2, Figs. 2, 3; see also Ex. 2001 ¶ 63 (Patent Owner’s expert witness confirming there is a difference between merely “connected” and “directly connected”). Thus, the intrinsic record supports a conclusion that the concept of “directly connected” is not related to whether one component is “flush with” another component. This disclosure of the ’631 patent also illuminates the meaning of “directly connected.” As shown in Embodiment 2, something may be connected with another thing even if there are intervening components, e.g., a transmission shaft or coupling; however, as shown in Embodiment 1, the ’631 patent uses the term “directly connected” only where no such intervening components are disclosed. Ex. 1001, 5:15– 6:19, Figs. 2, 3. Besides the guidance provided with respect to the embodiments discussed above, the ’631 patent does not otherwise expressly define the term “directly connected.” See generally Ex. 1001. Thus, we consider what the ordinarily skilled artisan would consider to be its ordinary and customary meaning. In this respect, Patent Owner also uses the word “uninterrupted” to describe “directly connected.” See Prelim. Resp. 6; see also Ex. 2001 ¶¶ 61–71. We conclude based on this record that the concept of “uninterrupted” is more apt than the concept of “flush with,” and find it to be a better description for the ordinary and customary meaning of “directly connected.” For example, the ’631 patent describes, in Embodiment 1, “the turbine engine 19 is connected to the plunger pump 18.” Ex. 1001, 5:26–27 (emphasis added). However, it is without question that Embodiment 1 positions a reduction gearbox between the turbine engine and plunger pump; thus, the engine and pump may be connected, but they are not directly connected. See, e.g., Fig. 2. On the other hand, regarding this same Embodiment 1, the ’631 patent describes that “the turbine engine 19 is directly connected to an input end of the reduction gearbox 24,” and there are no components illustrated or described as being between the turbine engine and reduction gearbox. Id. at 5:28–30 (emphasis added), Fig. 3. The connection between the turbine engine and reduction gearbox shown in Embodiment 1 is more aptly described as being uninterrupted. Thus, this illuminates the meaning of “directly connected.” In view of the above, we ascribe to the term “directly connected” its ordinary and customary meaning as it would have been understood by a person of ordinary skill in the art, and we find that ordinary and customary meaning to require that the turbine engine and reduction gearbox are connected with nothing intervening there-between so that their connection is uninterrupted.” slip op. at 29

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

    “Petitioner’s evidence shows that the Apollo 1 apparatus has two gearboxes and a clutch between its turbine engine and plunger pump, thus the Apollo 1 does not meet the claim limitation “the plunger pump is a plunger pump integrated with a reduction gearbox, the turbine engine is directly connected to an input end of the reduction gearbox integrated on the plunger pump.” Ex. 1001, 6:51–54. Petitioner’s Exhibit 1017 is explained by Mr. Zhang11 as having these two gearboxes and clutch, where at least one of the gearboxes and the clutch forecloses the system from having a single reduction gearbox that is both integrated on a pump and directly connected to a turbine engine. Ex. 2010 ¶¶ 8–12. Petitioner presents no evidence contradicting Mr. Zhang’s understanding of the Apollo 1 configuration and, notably never attempted to explain exactly what is shown in the above-reproduced photograph from its own Exhibit 1017, even when given the opportunity to address Mr. Zhang’s testimony in its Reply. See generally Reply.” slip op. at 50

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 10,865,631
• Runway Safe Group AB v. Earthstone International LLC And W. Gene RamseySome claims unpatentable
  PTAB · Feb 17, 2021 · IPR2019-01490 · APJ Ryan H Flax · IPR · Final written decision

  Claims 1–11 and 13–16 are unpatentable as obvious; claim 12 was not shown unpatentable because the asserted grounds did not establish its interconnected open porosity limitation.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “proving unpatentability of the challenged claims, and the burden of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner must prove unpatentability by a preponderance of the evidence. See 35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d) (2019). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. After considering the parties’ arguments and supporting evidence, we conclude that Petitioner has proven by a preponderance of the evidence that claims 1–11 and 13–16 of the ’671 patent are unpatentable. 35 U.S.C. § 316(e). Petitioner has not met that burden with respect to claim 12.” slip op. at 2

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

    “any of Narmo, Hojaji, and Ramsey. Resp. 8, 16–17. On this record, we conclude it would have been obvious to the person of ordinary skill in the art to combine the teachings of ACRP and Narmo, Hojaji, or Ramsey, as asserted by Petitioner. Moreover, we also conclude such combinations merely use specific foamed glass compositions in structures already using foamed glass compositions and that the skilled artisan would have reasonably expected to successfully do so. See Ex. 1002 ¶¶ 78, 81, 84. The simplicity of the technology and the reasonably high level of skill in the art support such a conclusion.” slip op. at 57

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable

    “disclosed foamed glass aggregate bodies to have an “interconnected open porosity” is based on an allegation of inherency, where the open porosity forms because of weathering. See Pet. 38–39 (citing Ex. 1002 ¶ 75). Similar to our conclusion regarding Ground 6, we also find that Petitioner has not demonstrated that the subject matter of claim 12 would have been obvious over ACRP. We are directed to no evidence of record that the interconnected open porosity limitation would necessarily be present or would be the natural result of weathering, as asserted by Petitioner. See Endo Pharm., 894 F.3d at 1381. To the extent that Petitioner’s argument is premised on a KSR “obvious to try” rationale, as with Ground 6, we find Petitioner presents no evidence that a person of ordinary skill in the art would have had any reason to pursue the claimed interconnected open porosity, no evidence of a design need for such a structure, and no evidence of market pressure to solve any problem relating to foamed glass porosity. KSR, 550 U.S. at 421. Indeed, Petitioner failed to clearly articulate any obvious to try rationale in the Petition.” slip op. at 74

  • Strike new argumentNew argument consideredDenied

    “III. PARTIES’ MOTIONS TO STRIKE OR EXCLUDE Petitioner filed a Motion to Strike Patent Owner’s Sur-Reply for” slip op. at 77

  Patent outcomesUS 9,382,671 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 9,382,671
• Lornic Design, Inc. v. Humboldt B.V.No claims unpatentable
  PTAB · May 26, 2020 · IPR2019-00346 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1–5 and 7–22 were not shown unpatentable because Petitioner did not establish that Machacek, Breitschmid, or Plamper was analogous art.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Bonenberger has significant education and experience in industrial engineering and with snap-fit applications. Ex. 1012 ¶¶ 2–5; Ex. 1013; Ex. 2040, 63:24–64:11, 66:13–67:12. Mr. Bonenberger’s testimony about snap-fit connections and their application is potentially helpful in determining the scope of the knowledge of one of ordinary skill in the art and whether the asserted references could be combined. Regarding whether the testimony lacks sufficient basis in facts or data, Mr. Bonenberger’s declaration expressly indicates that Mr. Bonenberger is opining based on his knowledge and experience and providing his opinion of what one of ordinary skill in the art would have understood or would have done. See Ex. 1012 ¶¶ 11 (“I have also relied upon my education, training and experience in the fields of mechanical attachments in general and, in particular, snap-fit attachment development for product applications.”), 14 (“I agree that a PHOSITA will have a bachelor’s degree in mechanical engineering or equivalent work experience.”), 16 (“A PHOSITA would make no such distinction.”), 18 (“For example, there is nothing in the relative forces experienced by the snap-fit in the application of the ‘225 that would lead a PHOSITA to believe . . . ”), 19 (“A PHOSITA would have easily understood . . . ”), 20 (“A PHOSITA would have easily understood . . . ”), 21 (“A PHOSITA would have easily understood . . . ”), 22 (“Both of these are well within the understanding of a PHOSITA.”), 23 (“Such a construction would be well within the understanding of a PHOSITA . . . ”), 25 (“In reviewing Machacek, Breits[ch]mid and Plamper, there is nothing in these patents that would cause a PHOSITA to . . . ”); Ex. 2040, 68:14–21 (Mr. Bonenberger answering “yes” to the question “[s]o, this is an example of your talking from the perspective of what a PHOSITA would understand?”). Mr. Bonenberger has reliably applied the principles and methods to the facts of this proceeding. Furthermore, even if Mr. Bonenberger does not meet the parties’ definition of one of ordinary skill in the art, his testimony, in combination with other record evidence, is useful in determining what he believes one of ordinary skill in the art may have known at the relevant time period about snap-fit connections and their application. Thus, we deny Patent Owner’s Motion to Exclude with respect to Exhibit 1012.” slip op. at 17

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on the full record before us, we see no reason to disturb our preliminary finding regarding the level of ordinary skill in the art. Accordingly, we maintain and reaffirm that one of ordinary skill in the art would have “a bachelor’s degree in mechanical engineering or with equivalent work experience.” Inst. Dec. 10–11 (citing Pet. 11; Ex. 1003 ¶ 46). This level of skill in the art is consistent with the disclosure of the ’225 patent and the prior art of record.” slip op. at 21

  • Prior constructionPrior construction adoptedDecided for petitioner

    “adopted the interpretations quoted above for “female receiving end,” “narrowed entrance,” “the receiving space being substantially larger than the narrowed entrance channel along the longitudinal axis of the whip,” and “the narrowed entrance channel is directed facing away from the profiled side of the whip.” Inst. Dec. 12. Patent Owner agrees with Petitioner that the terms listed in the Petition should have the same interpretations as determined by the district court. PO Resp. 5 (citing Pet. 12). As shown above in emphases, some interpretations include “during use of the brush element.” Petitioner argues that “[n]owhere does the Court require, nor did the Board adopt a definition that requires, that the ‘use’ be the specific cleaning of animal carcasses shown in the ’225 patent.” Pet. Reply 10. We do not need to decide whether the use is specific to cleaning animal carcasses because, even if the use were not so specific, for the reasons set forth below in Section G., we would still determine that Machacek, Breitschmid, and Plamper are not in the same field of endeavor as the ’225 patent, are not reasonably pertinent to the problem facing the inventor of the ’225 patent, and would not have logically commended themselves to the inventor’s attention in considering the problem of the ’225 patent. The full record before us, thus, provides no reason to modify our preliminary decision to adopt the district court’s interpretations for the terms listed and discussed above. We, therefore, continue to apply the above-identified district court’s interpretations for (1) “female receiving space,” (2) “narrowed entrance channel” and “narrowed entrance,” (3) “the receiving space being substantially larger than the narrowed entrance channel along the longitudinal axis of the whip,” and (4) “the narrowed entrance channel is directed facing away from the profiled side of the whip” to resolve the parties’ dispute. Pet. 12–14; Ex. 1011, 16.” slip op. at 23

  • Obviousness (§103) › Analogous artNon analogous artNot shown unpatentable

    “been brought to the attention of the ordinary skilled artisan, the application of Machacek to Debaere, despite the differences in male and female connections and the forces involved, would have been a matter of ordinary skill to a “person of ordinary creativity.” See Pet. 17–19; Pet. Reply 2–8; see also Tr. 45:6–47:2 (Patent Owner’s counsel addressing ordinary skill). However, Petitioner does not argue sufficiently or present sufficient evidence that Machacek logically would have commended itself to the inventor’s attention in considering the problem of the ’225 patent. See Pet. 17–19; Pet. Reply 2–8; Ex. 1003 ¶ 60. Specifically, Petitioner does not present sufficient argument and evidence why one of ordinary skill in the art would have looked to Machacek for a solution to the problem addressed by the ’225 patent or why Machacek’s pinwheel testing device that reduces the risk of transferring blood borne disease logically would have commended itself to an inventor’s attention when considering the problem of replacing brush elements attached to a rotatable body that imparts rotation to the brushes rotatably attached to it. Clay, 966 F.2d at 659. Even considering the structural similarities of Debaere and Machacek, which is Petitioner’s basis for combining the references, the full record does not explain why or how one of ordinary skill in the art would have considered Machacek at all so that the asserted structural similarities would have been perceived or Machacek would have prompted applying a particular connection to Debaere. Scientific Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir. 2014) (“The pertinence of the reference as a source of solution to the inventor’s problem must be recognizable with the foresight of a person of ordinary skill, not with the hindsight of the inventor’s successful achievement.”).” slip op. at 47

  Patent outcomesUS 9,433,225 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,433,225
• Firstspear, LLC v. Lineweight, LLCRehearing denied
  PTAB · Mar 25, 2020 · IPR2019-01170 · APJ Patrick R Scanlon · IPR · Rehearing

  The Board denied rehearing and maintained its denial of institution because Petitioner did not show that combining Fegen and Stevens would have made the claimed openings compatible with the asserted properties.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “37 C.F.R. § 42.71(d), which provides: A party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. We review our Decision under an abuse of discretion standard. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2

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

    “motivated to adhere Fegen’s exterior garment layer to a substrate in order to provide a substrate material having water-proofing or scent blocking properties as taught by Stevens.” Pet. 31–32 (citing Ex. 1002 ¶ 55; Ex. 1006, 2:1–4, 3:50–53). In addition, the Petition asserts that one of ordinary skill in the art “would understand that the slits in Fegen extend all the way through the exterior layer and the substrate in order to permit attachments to be more easily secured to Fegen’s garment.” Id. at 35 (citing Ex. 1002 ¶ 62; Ex. 1005, Fig. 3). In the Decision, we determined that Petitioner had failed to establish sufficiently that it would have been obvious to one of ordinary skill in the art to combine Fegen and Stevens in the manner proposed. Dec. 14–16. In particular, we determined that providing slits or openings in the substrate of the proposed combination of Fegen and Stevens “would defeat, or at least greatly diminish, any water-proofing or scent blocking properties of the substrate.” Id. at 15. Thus, we disagreed with Petitioner’s contention that one of ordinary skill in the art would have been motivated to add a substrate to Fegen’s garment for the purpose of providing water-proofing or scent blocking properties. Id.” slip op. at 3

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

    “We disagree with this broad assertion because the Petition does not demonstrate sufficiently why providing openings in the substrate, as the claims require, would not have led one of ordinary skill in the art to consider such openings detrimental to the rationale of providing water-proofing or scent blocking properties. Petitioner’s assertion also ignores the fact that the corresponding openings in the substrate would allow sweat and odor to pass through freely, thereby decreasing the effectiveness of water-proofing and scent blocking properties. Although no evidence of record appears to state expressly that openings of the size claimed would allow sweat and odor to pass freely through the substrate, this fact would have been readily apparent to one of ordinary skill in the art. Thus, the Rehearing Request fails to demonstrate that a reasonable fact finder could not have arrived at this fact, such that our determination is supported by substantial evidence. See OSI Pharm., 939 F.3d at 1381–82.” slip op. at 4

  • BurdenDecided for patent owner

    “Petitioner also argues that “[t]here is no evidence supporting a difference in effectiveness of the water-proofing and scent blocking properties of the substrate whether the substrate is a solid sheet of material or the substrate contains slots or openings in the same location as the exterior layer.” Reh. Req. 3. This argument, however, attempts to improperly shift the burden of persuasion away from Petitioner. “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). The burden of persuasion rests with Petitioner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Thus, Petitioner has the burden of presenting evidence supporting its assertion that there is no difference in effectiveness of the water-proofing and scent blocking properties of the substrate with or without openings.” slip op. at 5

  § 103 obviousness
  Patents in suitUS 9,173,436

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.