- Agrofresh Solutions, Inc. v. Lytone Enterprise, Inc.All claims unpatentablePTAB · Jul 25, 2022 · IPR2021-00451 · APJ Devon Zastrow Newman · IPR · Final written decision
Claims 3 and 11 are unpatentable as obvious over Hisano and Daly, and over Daly and Hisano, because the skilled artisan would have been motivated to combine the teachings with a reasonable expectation of success.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“definition focuses on chemistry and materials science without a specific focus to the application of that knowledge to the subject matter of the invention, while Patent Owner’s proposal permits the artisan’s degree to be in horticulture or plant science, requires at least 2–4 years of experience in the area of postharvest biology and technology, and specifically requires “working with encapsulated gaseous agents such as the 1-MCP encapsulation complex.” PO Resp. 14. It is not clear on the record before us nor does Patent Owner’s expert explain why the additional, specific expertise in postharvest biology and technology would have been required to understand the teachings of the ’185 patent in a manner necessary to apply them. Moreover, the proposed additional skill level does not appear to be necessary in light of the skill level reflected by the asserted prior art. See 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, 163–64 (Fed. Cir. 1985)). For instance, Hisano measures preservation visually, by ascertaining whether the flowers looked fresh or appeared to have been harmed by effects of the chemicals added, and whether the water the flowers were stored in was cloudy. Ex. 1004 ¶ 24. This observation does not require specific expertise in postharvest biology and technology. Petitioner’s assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in this proceeding, although we agree with Patent Owner that a degree in plant physiology, horticulture, plant science or the like along with work experience, or a master’s degree in exchange for such work experience, in the area of controlled release of compounds would provide sufficient expertise to understand the teachings of the ’185 patent in a manner necessary to apply them. Accordingly, we adopt the following definition of the skilled artisan for purposes of this Decision: a bachelor’s degree in chemistry, chemical engineering, materials science, plant physiology, horticulture, plant science or the like, and 1–2 years of work experience, or a master’s degree in exchange for such work experience, in the area of controlled release of compounds, such as those used to inhibit ethylene response in plants.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededDecided for petitioner
“Neither party advances any claim terms for construction. Pet. 20; PO Resp. 15. We find that no express construction is necessary for purposes of rendering this Decision and apply the plain meaning of all terms. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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 13
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“It is not necessary for an expert’s experience or expertise to precisely match the art at issue. SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010). However, one offering expert testimony must at least have ordinary skill in the art to provide relevant and reliable testimony that is helpful to the factfinder. Kyocera Senco Indus. Tools, Inc. v. ITC, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022). “The Board has broad discretion to assign weight to be accorded expert testimony.” Consolidated Trial Practice Guide 35 (available at https://www.uspto.gov/TrialPracticeGuide Consolidated).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“We find that the ordinarily skilled artisan would have looked at Hisano as an analogous reference and would have been motivated to try scaling up its smaller-scale solution of effervescent tablets for delivery on a larger scale than single flower vases. We further find that the artisan would not have been deterred by Hisano’s lack of embodiments including gas agents and disclosing local use only that would have prevented use of 1- MCP directly with plants. Ex. 2013 ¶¶ 52–54. In particular, because Daly suggested the molecularly encapsulated 1-MCP could be made in powder form (Ex. 1005, 11:1–11), which is the form Petitioner suggested for use in the proposed obviousness combination (e.g., Pet 36–37), we are not persuaded by Patent Owner’s arguments regarding concerns the skilled artisan would have had about working with 1-MCP gas that is released into the atmosphere where the atmosphere becomes the treatment medium as opposed to a liquid medium. agent, along with Daly’s teachings that 1-MCP is a known substitute for STS without STS’s toxic waste byproduct would have motivated the artisan to explore use of 1-MCP. Daly’s teaching of using a cyclodextrin cage-stabilized and powdered version of 1-MCP to inhibit ethylene binding in plants would have motivated the skilled artisan to try this stabilized version in Hisano’s effervescent tablet preparation because of the benefits of effervescent ingredients for dissolution and dispersion, to treat plants on a larger scale. See Ex. 1005 11:1–20; Ex. 1006 ¶¶ 29, 110–115; Ex. 1035 ¶¶ 11–18. Hisano instructs the artisan about optimization by creating tablets with a proper “effervescence component: freshness preserving component to a weight ratio of between 6.5:3.5 and 5.0:5.0 to create a large, compact tablet agent that can secure some degree of the freshness preserving component” while also stabilizing the tablet for transportation and adjusting the ratios of components to affect the “target quality, effervescence effects, and dissolution time, etc. of the final product.” Ex. 1004 ¶¶ 12, 14. These additional teachings would have led the skilled artisan to understand that an effervescent tablet dosage made with cyclodextrin-stabilized 1-MCP could be made for larger scale production and use. In particular, we find that the artisan would have been motivated to combine the teachings of Hisano and Daly because of 1) Daly’s teaching that STS is problematic for use in inhibiting ethylene in plants due to difficulties in silver waste byproduct disposal, leading to “a great desire among postharvest physiologists to find alternatives to STS” (Ex. 1005, 2:42–64); 2) Daly’s teachings that cyclopropene and its derivatives, including 1-MCP, are “commercially acceptable replacement[s] for STS”) (id. at 1005) and that powder complexes provided advantages over 3) Hisano’s teaching that an ethylene suppressing agent could be delivered via an effervescent tablet, which when dissolved in water, creates “generated carbonic acid gas [that] will promote assimilation action, which will be effective for cultivating, and preserving the freshness of, the cut flowers (plants).” Ex. 1004 ¶ 25; see also Ex. 1006 ¶¶ 113–115 (opining that the skilled artisan would have understood encapsulated 1-MCP, a powder-based form, to be one of a finite number of safer substitutes for STS that could be incorporated into an effervescent tablet using methods known to the skilled artisan at the time); Ex. 1013 at 9 (identifying 1-MCP as a newly discovered “ethylene inhibitor [that acts] as a binding site competitor and is very promising as a postharvest treatment for both potted plants and fresh cut flowers [giving] ethylene protection equal to that obtained from STS, but without silver” and noting that a “company plans to sell the product in a powder form that will release MCP gas when mixed with water”). The art suggested finding substitutes for STS, meaning that the skilled artisan would have looked for likely substitutes such as this stable form of 1-MCP for use in various delivery methods. See, e.g., In re Kerkhoven, 626 F.2d 846, 850 (“It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition which is to be used for the very same purpose.”).” slip op. at 25
Patent outcomesUS 6,897,185 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,897,185 - Godbersen-Smith Construction Company D/B/A/ Gomaco Corporation v. Guntert & Zimmerman Const. Div., Inc.All claims unpatentablePTAB · May 19, 2022 · IPR2021-00050 · APJ James J Mayberry · IPR · Final written decision
Claims 1–13 are unpatentable: claims 1 and 7 over Swisher and Rio; claims 2–6 and 12–13 over Swisher, Rio, and CIII; claims 4 and 13 also over Widdrington; and claims 8–11 over Guntert, with or …
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill Public accessibility of a reference centers on whether the reference is disseminated or otherwise made available to persons having ordinary skill in the art. See Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1355–56 (Fed. Cir. 2018). As such, we start by defining the level of ordinary skill. 1. Petitioner’s contentions Petitioner contends that a person having ordinary skill in the art “would have had at least a four-year degree in mechanical engineering or a closely related field and at least two years of experience designing, developing, or operating heavy machinery, including their components and control systems.” Pet. 12 (referencing Ex. 1002 (Declaration of Dr. William Singhose) ¶ 22). Petitioner also contends that “[a]dditional education could substitute for professional experience and significant work experience—such as working with, servicing, or operating heavy machinery in the field— could substitute for formal education.” Id. at 12–13. Other than providing his understanding of the types of information considered in determining the level of ordinary skill, Dr. Singhose does not provide any additional support for this definition. See Ex. 1002 ¶¶ 21–22. 2. Patent Owner’s response Patent Owner contends that the level of ordinary skill in the art is a person having “a Bachelor’s degree in mechanical engineering, or a related field, and approximately two years of experience designing or developing heavy machinery, including their components and/or control systems.” PO Resp. 12 (referencing Ex. 2030 (Declaration of Dr. Carl Nelson) ¶ 21). Like Dr. Singhose, Dr. Nelson provides his understanding of the types of information considered in determining the level of ordinary skill, but does not provide any additional support for this definition. See Ex. 2030 ¶¶ 19–21.” slip op. at 18
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Whether a document qualifies as a printed publication is a legal conclusion based on underlying factual determinations. Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018). slip op. at 27
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“C. Ground 1: Claims 1 and 7 as anticipated by Swisher Petitioner contends that Swisher anticipates claims 1 and 7. Pet. 6, 18–33. We address Petitioner’s contentions with respect to how Swisher discloses the subject matter of independent claim 1, below.18 1. Independent claim 1” slip op. at 40
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“(3) Conclusion-reasonable expectation of success We find, on the complete trail record, that Petitioner has demonstrated, by a preponderance of the evidence, that a person having ordinary skill in the art would have had reasons to combine Rio’s teaching directed to its actuators, sensors, and control system with Swisher’s control system, with a reasonable expectation of success. We weigh heavily Rio’s own disclosure on using a rotary actuator in conjunction with a jacking column. We also agree with Patent Owner’s declarant, Dr. Nelson, that any problem that may be encountered in combining the teachings of Swisher and Rio is the type a mechanical engineer may encounter with many types of machines and mechanisms, and the physics and math involved in solving these problems are the same. Cf. Ex. 1157, 13:11–16:13. d) Conclusion-motivation to combine In conclusion, we find that Petitioner has demonstrated, by a preponderance of the evidence, that a person having ordinary skill in the art would have had reasons to combine Rio’s and Swisher’s teachings and would have had a reasonable expectation of success in the combination. We also find that Petitioner’s reasons are adequately supported with rational underpinnings. See KSR Int’l Co., 550 U.S. at 418 (stating that, to facilitate the analysis of an obviousness position, the proponent should provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”).” slip op. at 69
Patent outcomesUS 9,708,020 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,708,020 - Godbersen-Smith Construction Company D/B/A/ Gomaco Corporation v. Guntert & Zimmerman Const. Div., Inc.All claims unpatentablePTAB · May 19, 2022 · IPR2020-01698 · APJ James J Mayberry · IPR · Final written decision
The Board held claims 1–20 unpatentable: claims 1–11, 13–17, 19, and 20 over CIII and Rio; claim 18 over CIII, Rio, and Smolders; and claims 11–12 over CIII, Rio, and Widdrington.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“the level of ordinary skill. That is, our conclusion of public accessibility of CIII does not depend on the actual dissemination of the manual to customers. We find, independent of this actual dissemination, a person having ordinary skill in the art, exercising reasonable diligence, could have accessed CIII prior to the earliest filing date of the ’749 patent, by locating a dealer or user of the underlying machine, and requesting a copy. See, e.g., Ex. 1012 ¶¶ 3, 13; Ex. 1164 ¶ 6. The lack of any restrictions on disseminating the manual supports a finding that this approach would have been successful. See, e.g., Ex. 1012 ¶¶ 3, 26; Ex. 1164 ¶ 6.” slip op. at 31
- Skill levelSkill level petitioner adoptedDecided for petitioner
“4. Analysis and Conclusion – Level of Ordinary Skill The level of skill in the art is “a prism or lens” through which we view” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“d) Conclusion-motivation to combine In conclusion, we find that Petitioner has demonstrated, by a preponderance of the evidence, that a person having ordinary skill in the art would have had reasons to combine Rio’s and CIII’s teachings and would have had a reasonable expectation of success in the combination. We also find that Petitioner’s reasons are adequately supported with rational underpinnings. See KSR Int’l Co., 550 U.S. at 418 (stating that, to facilitate the analysis of an obviousness position, the proponent should provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”).” slip op. at 61
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner
“where one of the embodiments within the scope of the claims was found in the prior art. Zaxcom, Inc., 2022 WL 499843, *2. Accordingly, because there was no long-felt unsolved need for an embodiment covered by the claims, Patent Owner does not demonstrate a nexus between the claimed invention and a long-felt need.” slip op. at 86
Patent outcomesUS 10,029,749 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,029,749 - Haas Automation, Inc. v. Olati LLCAll claims unpatentablePTAB · May 13, 2022 · IPR2021-00146 · APJ Patrick R Scanlon · IPR · Final written decision
Claims 1–8 are unpatentable: claims 1, 2, 4, and 6 are anticipated by Oraby; claims 7 and 8 are obvious over Oraby and Edie, among other grounds.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“In the Decision on Institution, we agreed with Patent Owner’s arguments and adopted Patent Owner’s proposed level of ordinary skill in the art, stating it was “consistent with the evidence of record, including the asserted prior art.” Dec. Inst. 10. Petitioner indicates that it does not challenge this determination for the purposes of this proceeding. Pet. Reply 1. Based on our review of the complete record, we continue to apply the level of ordinary skill in the art adopted in the Decision on Institution.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1. “at least one controller . . . adjusts the power” In the Decision on Institution, we determined that there was no need to construe explicitly the phrase “at least one controller . . . adjusts the power.” Dec. Inst. 11–12 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)). Neither party disagrees with this determination. Pet. Reply 7 & n.4; PO Resp. 8–9. Thus, on the full record, there is no controversy between the parties regarding the construction of this phrase. Furthermore, explicitly construing this phrase would have no effect on the analysis below. Accordingly, we need not construe this phrase to resolve the issues in dispute in this proceeding. See Nidec, 868 F.3d at 1017; 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)). After considering the parties’ arguments regarding Patent Owner’s proposed claim construction for the phrase “adjusts the power exerted by at least one of the spindle drive system and the feed drive system in real-time based on the real-time determinations,” we declined to adopt the proposed construction in the Decision on Institution. Dec. Inst. 13–16 (citing Prelim. Resp. 9–11; Paper 8, 2–4; Paper 9, 2–3). Neither party has addressed this proposed construction in their post-institution briefing. Therefore, on the complete trial record before us, we need not construe this phrase to resolve Realtime Data, 912 F.3d at 1375.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“d) Conclusion In summary, we construe “real-time” to mean “autonomously during a machining operation and performed quickly enough to achieve a desired machining system performance.”” slip op. at 18
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Like the database in Lister, the University of Sheffield’s University Library database allowed members of the public, at least as early as 2004, to “electronically search[] the University Library index” via the internet or the library’s computer terminals, and using any of the author, department, date, and, most importantly, title. See Ex. 1010 ¶ 7. Indeed, Ms. Abbs states that, once a thesis such as Oraby is received by the library, “at least the title, author, related department, and date of completion are recorded in the University Library’s records.” Id. ¶ 3 (emphasis added). Furthermore, like the manuscript in Lister, Oraby has a title that is descriptive of its subject matter—“Mathematical Modelling and In-Process Monitoring Techniques for Cutting Tools” (Ex. 1004, 1)—as Oraby indeed covers “mathematical models which describe the cutting tool-workpiece interaction” and “accurate on-line monitoring of tool-state” (see id. at 3). Thus, a reasonably diligent researcher in the field of CNC machining interested in ways to improve the 11 The court ultimately held, however, that the manuscript did not qualify as prior art because there was insufficient evidence that the aforementioned “date that [the manuscript] was included in either [of the two] databases that permitted keyword searching of titles” had actually antedated the patent’s critical date. Lister, 583 F.3d at 1316–17. library’s database by title for references disclosing such improvements. Furthermore, given Oraby’s title that describes its subject matter covering particular improvements in the CNC machining process, Oraby would have been discovered through such an electronic search. As such, Ms. Abbs’ declaration is sufficient evidence to establish by a preponderance of the evidence that Oraby was publicly available before the ’432 patent’s critical date and therefore qualifies as a printed publication.” slip op. at 21
Patent outcomesUS 8,136,432 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,136,432 - Best Buy Co., Inc. / Target Corporation et al. v. James L. DriessenAll claims unpatentablePTAB · Apr 15, 2022 · IPR2021-00198 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over NetPack, with Boyle additionally supporting claim 4’s scratch-off code limitation; alternate grounds were not reached.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We agree with Petitioner’s proffered level of skill in the art because it appears consistent with the problems addressed in the ’052 patent. For example, the ’052 patent states the “invention is essentially retail point of sale for the Internet.” Ex. 1001, 4:21–22. This aligns with Petitioner’s proposed level of skill, which specifically requires working knowledge of such systems as opposed to Patent Owner’s assertion that experience in the prepaid card industry is required. The ’052 patent further describes the requirements for “Font Fingerprinting, hidden pixelization, concealed ASCII and non-visible/inaudible codification” and “ISO standard 10918” for delivery of images over the Internet. Id. at 5:64–67, 6:40–41; see also id. at 6:50–8:23 (describing the technical aspects of the invention), 9:44–46 (“Fig. 5 shows some examples of recording devices that are used or could be modified for use as the media delivery method, access CARD, or to deliver a small cookie-free-cache-back application.”), 9:51–54 (“[T]he CARD may also deliver a small amount of software code to run the mini-Application for Cookie Free Cache Back system.”). Based on this disclosure in the ’052 patent, we agree with Petitioner that a person of ordinary skill in the art would have had a degree in computer engineering or a related field as opposed to a degree in business or marketing, as Patent Owner asserts.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“After reviewing the evidence and argument presented by the parties, we determine that it is not necessary to resolve whether preselection is limited to seller side preselection only because, as discussed below in our analysis of claim 1, we find the prior art discloses preselection by the seller. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting 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
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“cards would be used, such as . . . the retail and backend computer systems and security mechanisms for selling cards and authorizing their use through a computer network, or details such as using scratch-off materials to conceal codes.” Pet. 18–19. Petitioner provides several reasons why a skilled artisan would have been motivated to implement “Boyle’s detailed teachings on retail sale of online access cards . . . into the NetPack system.” Id. at 19. First, Petitioner contends that “[g]iven the overlapping and complementary nature of these two references, a [skilled artisan] implementing the NetPack online access system would have quickly identified Boyle as providing relevant teachings.” Id. at 19–20 (citing Ex. 1003 ¶¶ 138–140, 144–250; Ex. 1004, 1). Second, Petitioner contends that, given NetPack’s lack of “express disclosure of certain implementation details,” a skilled artisan would have been motivated “to rely on and incorporate Boyle’s teachings for implementation details such as using computers to store prices for products, to record payments, and to authorize product downloads.” Id. at 20 (citing Ex. 1003 ¶ 141). Third, Petitioner contends that a skilled artisan “would have appreciated the benefits provided by certain aspects of Boyle, such as using a scratch-off label to conceal important information on a card ‘from public view prior to [a card] being sold’” and “would recognize the need to conceal the authentication information on a NetPack card from the public and naturally consider adopting a known and common method for doing so from Boyle.” Id. (citing Ex. 1003 ¶ 142; Ex. 1004, 6:31–7:3). Fourth, Petitioner contends that a skilled artisan “would have had a reasonable expectation of success in using Boyle’s teachings in NetPack” because “NetPack and Boyle describe highly-similar systems” and “by 1999 e-commerce was well known and used, and Boyle relied on many ‘well known’ aspects of e-commerce, such as webpages and authentication.” Id. (citing Ex. 1003 ¶ 143; Ex. 1004, 3:7–4:27, 12:14–20, 15:1–8, 15:26–32). Patent Owner does not address Petitioner’s stated reasons for combining the teachings of NetPack and Boyle or reasonable expectation of success. See PO Resp. 31–34. Based on our review of Petitioner’s contentions and evidence, we find Petitioner states reasons supported by a rational underpinning for combining the teachings of NetPack and Boyle.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“For the following reasons, we are persuaded by Petitioner’s contentions that NetPack’s Chat Pack is “preselected” under Patent Owner’s construction of that term. We make the following findings concerning the disclosure of NetPack. NetPack discloses a Chat Pack product available on a “Special Application Card.” Ex. 1005, Ex. A, 4 of 11. The Chat Pack product is described as “Send files to Anyone Without ‘E’ Mail.” Id. NetPack “makes it possible for Internet products and services to be purchased in a retail store” with one of “three discrete innovations.” Ex. 1005, Ex. A, 6 of 11. One of those innovations is “NetPack’s Special Application Package (SAP)™ [which] makes it possible for software manufactures, some book publishers, or other Internet products or services to be represented and purchased in a retail store environment and then later down loaded from the Internet.” Id. The SAP “will employ bar code inventory, theft control language, and magnetic terminal validation. A single bar code or terminal pass at the point of distribution will activate the product . . . . The card shall display the corresponding URL product description on the front and rear of the card.” Id. at 8 of 11. “In the retail store, [the] Special Application Package . . . can represent any specified value, product, or service.” Id. at 10 of 11. NetPack discloses that “the cards facilitate the ability to stock a large inventory of Internet deliverable software products or services with little or no investment.” Id. NetPack discloses “preselected” as required by claim 1 even under Patent Owner’s construction of “preselection,” which requires the seller to perform the preselection prior to the customer selecting the product for purchase. Chat Pack is sold as a Special Application card. The Special Application card “can represent any specified value, product, or service.” Ex. 1005, 10 of 11. In this case, Chat Pack is the specified product. Therefore, the Chat Pack product is preselected by the seller.” slip op. at 17
Patent outcomesUS 10,304,052 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,304,052 - Med-El Elektromedizinische Geräte Ges.M.B.H. v. Sonova AGAll claims unpatentablePTAB · Mar 31, 2022 · IPR2021-00023 · APJ Avelyn M Ross · IPR · Final written decision
Claims 1, 2, 7, 8, and 14 are unpatentable over Meier; claims 5, 10, and 11 are unpatentable over Meier and Kenigsberg.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“porous cover element for acoustic aperture SE, Meier’s disclosure is not so limited. Id. at 3:18–21. For example, Meier describes “cover elements for vents.” Id. at 4:66; see Ex. 2011, 73:1–5 (Dr. Giacomin’s similar testimony). Petitioner, relying on the testimony of Dr. Giacomin, explains that “[b]ased on the disclosure of Meier, the cover element covers the air vent in a manner similar to how the cover elements are shown covering the acoustic input or output apertures, e.g., the cover element is assembled with the housing such that crevices are formed between these two components.” Pet. 26–27; see also id. at 21 (same); Ex. 1002 ¶¶ 42, 44–46, 52, 60–61. Dr. Giacomin testifies that even when a nonporous cover element is used, the cover element needs to be coated with a hydrophobic coating to prevent water from entering the vents, i.e., crevices. Ex. 2011, 73:1–23. Dr. Giacomin’s testimony below illustrates Petitioner’s position.” slip op. at 30
- Skill levelSkill level petitioner adoptedDecided for petitioner
“materials science.” Pet. 17–18 (citing Ex. 1002 ¶ 20). Patent Owner does not propose its own definition or dispute Petitioner’s proposed definition except to assert that “other disciplines including electrical engineering should be included.” PO Resp. 8–9. In light of the record before us, we determine that Petitioner’s proposed definition is consistent with the prior art of record and apply it for this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings on 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))). We also include disciplines, including electrical engineering, as Patent Owner proposes. Accordingly, the definition for a person of ordinary skill in the art, applied herein, “would have had, as of December 2003, the equivalent of a Bachelor of Science degree in chemical engineering, mechanical engineering, electrical engineering, physics, or a related discipline and at least two years of related experience, preferably with a working understanding of plastics manufacturing, chemistry, and/or materials science.”” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We agree with Patent Owner that this term need not be expressly construed because, as explained below, Petitioner has sufficiently shown the cited art discloses a “coating” regardless of whether we adopt Petitioner’s proposed construction.” slip op. at 11
- Prior constructionPrior construction adoptedDecided for patent owner
“Petitioner has not persuasively explained why we should depart from the construction for “hydrophobic” adopted in the district court. Nor has Petitioner persuasively explained why here different constructions should apply in different forums. See Tr. 6:16–7:9, 32:3–9. Pursuant to 37 C.F.R. § 42.100(b), we have considered the district court construction of the term “hydrophobic,” which is consistent with the record evidence, and adopt it as our own. Therefore, we construe “hydrophobic” to mean “having resistance to water penetration wherein the contact angle between the water droplet with the surface exceeds 90 degrees.”” slip op. at 15
Patent outcomesUS 7,267,847 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,267,847 - New World Medical, Inc. v. The Regents Of The University Of CaliforniaAll claims unpatentablePTAB · Mar 11, 2022 · IPR2021-00066 · APJ Robert A Pollock · IPR · Final written decision
Claims 1–11 are unpatentable: claims 1–11 are anticipated by Quintana and obvious over Quintana; the Board did not reach the Jacobi ground.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“Patent Owner filed a motion to exclude evidence (Paper 38); Petitioner opposed (Paper 41); and Patent Owner filed a reply in support of its motion (Paper 43). Petitioner also filed a motion to exclude evidence (Paper 39); Patent Owner opposed (Paper 40); and Petitioner filed a reply in support of its motion (Paper 42). We addressed (and denied) the parties’ motions to exclude in Paper 49.” slip op. at 3
- Expert testimonyPetitioner expert creditedPatent owner expert discountedOther
“We “conclude[d] that the better course is to have a complete record of the evidence,” and, therefore, denied Petitioner’s Motion, but also explained that “to the extent that Dr. Condon’s testimony and Patent Owner’s reliance thereon ventures into areas the witness has conceded he either does not understand or has inadequately analyzed,” we would accord it little weight, as distinguished “from that relating to Dr. Condon’s technical expertise in, for example, anatomy, eye surgery, and his own reading of evidence.” Order 13. Therefore, it is through this lens that we consider and analyze Dr. Condon’s testimony here.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 22 (citing Ex. 1003 ¶ 24). On page 18 of our Institution Decision, we provisionally accepted Petitioner’s proposed definition, which was not opposed by Patent Owner, and is consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’544 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). As Patent Owner expressly agrees with our analysis, we apply Petitioner’s proposed definition here. See PO Resp. 11, n.4. C.” slip op. at 25
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“1. “A device useable to create an opening in the trabecular meshwork of the eye” Independent claim 1 is directed to “[a] device useable to create an opening in the trabecular meshwork of the eye” and having a “foot member . . . advanceable, tip first, through Schlemm’s Canal to facilitate performance of a surgical procedure using the surgical instrument.” Ex. 1001, 23:4–5, 23:18–20. As an initial matter, we consider the preamble of claim 1 limiting here because a device that “create[s] an opening in the trabecular meshwork” recites or, at a minimum, implies, “essential structure or steps” required for the insertion and advancement of the instrument through Schlemm’s Canal as set forth in [1.d]. See Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002).8” slip op. at 26
Patent outcomesUS 9,999,544 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,999,544 - Attends Healthcare Products, Inc. v. Paul Hartmann AGAll claims unpatentablePTAB · Feb 24, 2022 · IPR2020-01480 · APJ Neil T Powell · IPR · Final written decision
Claims 1–21 are unpatentable as obvious over Benning and Karami ’626; claims 8 and 21 are also unpatentable over that combination with Miyamoto ’499.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In our Decision granting institution, we preliminarily adopted Petitioner’s unopposed proposal. Inst. Dec. 8–9. Patent Owner does not challenge Petitioner’s proposed level of ordinary skill and does not propose a level of ordinary skill. See generally PO Resp.; PO Sur-reply. In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation and internal quotation marks omitted). 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 had a bachelor’s degree in chemistry, physics, mechanical, chemical, or process engineering, or a related degree and 2–3 years of experience designing diapers” and “would have been familiar with different diaper wing configurations (e.g., integral- and separate-wing), nonwoven materials, cloth-like backsheets, and hook-and-loop fastening systems.” Pet. 17–18; Inst. Dec. 8–9; Ex. 1012 ¶ 18. This level of skill in the art is consistent with the disclosure of the ’990 patent and the prior art of record.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes interpretations for “closure aid, comprising a . . . mechanical closure aid” and “over-abdomen retaining forces” with citations to the ’990 patent and declarant testimony. Pet. 22–23. Petitioner contends that formal interpretations of these claim terms are not required. Id. Patent Owner does not challenge Petitioner’s proposed interpretations and does not provide expressly any proposed interpretation. See generally PO Resp.; PO Sur-reply. Patent Owner, however, argues that claim 1 “requires that the retaining forces between the closure aids and the chassis secure the diaper on the adult user and are lower than the retaining forces between the closure aid and the front side parts.” PO Resp. 9. Patent Owner argues that claim 21 has similar requirements. Id. In our analysis of claims 1 and 21, we consider the parties’ dispute in view of Patent Owner’s reading of the claims and determine that Petitioner still shows that its proposed combination teaches or would have rendered obvious the above-quoted limitations. Thus, we determine that an express interpretation of the claims’ limitations is not necessary to resolve the parties’ dispute. Vivid, 200 F.3d at 803 (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); Nidec, 868 F.3d at 1017 (citing Vivid Techs. in the context of an inter partes review).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“’626 states that “fastener elements 41, 42 do not require landing zones and may engage directly with any portion of the nonwoven surface constituting the frontsheet 30, backsheet 32 or wings 40 of the brief.” Ex. 1004 ¶ 40. We also find that other relied-upon portions state that “nonwoven 50, which defines an exposed outer surface of at least one of the frontsheet 30, backsheet 32, and wing 40, contains a plurality of bonded fibers” and “[i]t will be appreciated that the backsheet may be formed of the above-identified nonwoven with a polypropylene or polyethylene film backing or as a laminate or like composite of a plurality of nonwovens.” Id. ¶¶ 62, 64. Karami ’626, thus, expressly teaches fastener elements that can engage directly with any portion of a nonwoven surface that may be formed with a film or laminate and that such a nonwoven can form a backsheet.” slip op. at 43
- Obviousness (§103) › KSR rationalesMotivation foundDecided for petitioner
“Benning to use Karami ’626’s film-nonwoven laminate for Benning’s underlayer 30, then the modified diaper would have material sections “of a non-woven material” with “a surface weight of 10 to 150 g/m2, in particular 20–100 g/m2, and specifically of 25–50 g/m2” and a backsheet with “relatively lower basis weights of 15–30 gsm (optimally 20 gsm).” Pet. 57; Ex. 1002 ¶ 32; Ex. 1004 ¶ 65. Based on these express teachings, we determine that one of ordinary skill in the art would have modified Benning’s diaper to have material sections made of nonwoven material of “25–50 g/m2” and an underlayer or backsheet of “optimally 20 gsm.” Ex. 1002 ¶ 32; Ex. 1004 ¶ 65. In other words, one of ordinary skill in the art following the express preferences of Benning and Karami ’626 would have modified Benning’s diaper to have a lower basis weight nonwoven for the underlayer or backsheet (“20 gsm”) with the already relatively heavier basis weight nonwoven for the material sections or wings (“25–50 g/m2”). Ex. 1002 ¶ 32; Ex. 1004 ¶ 65. Turning to whether the stated preferences in paragraph 65 of Karami ’626 relate only to Karami ’626’s T-shaped diaper, we find that Karami ’626 in other paragraphs repeatedly describes its improved and preferred minihook fastener element together with a preferred nonwoven having a “basis weight of 13–50 gsm.” Ex. 1004 ¶¶ 14, 15, 63; see also id. at claims 16, 17, 20, 54. Karami ’626, thus, teaches that its preferred minihook fastener element would engage an “optimally 20 gsm” backsheet, regardless of whether it was used in its T-shaped brief 12 or diaper 14, because it would still be a preferred nonwoven having a “basis weight of 13–50 gsm.” See Ex. 1004 ¶¶ 14, 15, 63. Karami ’626 also does not further limit its preferred nonwoven to those that have a film backing or laminate. See id. ¶ 64 (“It will be appreciated that the backsheet may be formed of the aboveidentified nonwoven with a polypropylene or polyethylene film backing or as a laminate or like composite of a plurality of nonwovens.”) (emphasis added); see also id. ¶¶ 15, 63 (describing a preferred nonwoven with particular fibers and interstice size but not specifying any film or laminate). Having determined above that the full record supports Petitioner’s asserted motivations of “provid[ing] a more comfortable and visually appealing cloth-like outer surface for Benning’s diaper” and “improv[ing] adjustability by enabling fasteners like Karami ’626’s” for using Karami ’626’s film-nonwoven laminate, we determine that Petitioner shows that one of ordinary skill in the art would have been motivated to use a lower basis weight nonwoven, such as a “20 gsm” nonwoven, because (1) such a nonwoven is described as “optimal[],” (2) would be in a lower part of the “13–50 gsm” range for the preferred nonwoven to use with Karami ’626’s preferred minihook fastener element, and (3) would “provide a more comfortable and visually appealing cloth-like outer surface for Benning’s diaper.” Ex. 1004 ¶ 65; Ex. 1019, 1:55–2:32; Ex. 1023, 8:3–28; Ex. 1037 ¶ 60; see also Ex. 1004 ¶¶ 14, 15, 63.” slip op. at 50
Patent outcomesUS 8,708,990 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,708,990 - Attends Healthcare Products, Inc. v. Paul Hartmann AGAll claims unpatentablePTAB · Feb 23, 2022 · IPR2020-01479 · APJ Neil T Powell · IPR · Final written decision
Claims 1–54 are unpatentable under §103 over combinations including Benning and Karami ’626, with additional references for certain claims.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In our Decision granting institution, we preliminarily adopted Petitioner’s unopposed proposal. Inst. Dec. 8–9. Patent Owner does not challenge Petitioner’s proposed level of ordinary skill and does not propose a level of ordinary skill. See generally PO Resp.; PO Sur-reply.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In our analysis of claims 1 and 34, we consider the parties’ dispute in view of Patent Owner’s reading of the claims and determine that Petitioner still shows that its proposed combination teaches or would have rendered obvious the above-quoted limitations. Thus, we determine that an express interpretation of these limitations is not necessary to resolve the parties’ dispute. Vivid Techs., 200 F.3d at 803 (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); Nidec Motor Corp., 868 F.3d at 1017 (citing Vivid Techs. in the context of an inter partes review). We also determine that no other claim term requires express interpretation. See id.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Taking these express teachings together, we determine that Karami ’626 provides factual support for Petitioner’s asserted motivation to use a film-nonwoven laminate like Karami ’626’s for Benning’s underlayer 30 because the film-nonwoven laminate would “improve adjustability by enabling fasteners like Karami ’626’s to ‘[e]ngage directly with any portion of [a diaper’s] nonwoven surface[s]’ to secure the diaper on a wearer.” Pet. 53–54 (alterations in original) (citing Ex. 1004 ¶ 40; Ex. 1012 ¶¶ 112– 113). Petitioner also contends that one of ordinary skill in the art would have been motivated to use Karami ’626’s film-nonwoven laminate for Benning’s underlayer 30 because Karami ’626’s film-nonwoven laminate would “provide a more comfortable and visually appealing cloth-like outer surface for Benning’s diaper.” Pet. 53 (citing Ex. 1004 ¶ 40; Ex. 1012 ¶¶ 112–113). Record evidence also supports Petitioner’s additional asserted motivation. Ex. 1012 ¶ 113; Ex. 1019, 1:55–2:32; Ex. 1023, 8:3–28; Ex. 1037 ¶ 60. Regarding whether these teachings are limited to Karami ’626’s T-shaped diaper, Karami ’626 expressly states that “absorbent article 10 is in the form of a T-shaped brief 12, although it may alternatively be in the form of a diaper 14 (as illustrated in FIGS. 9 and 10) or a pull-up 16 (as illustrated in FIG. 8)” and that “[t]he disposable article may be a diaper, a T-shaped brief, or a pull-up.” Ex. 1004 ¶¶ 35, 78. Karami ’626 also states that: Referring now to FIGS. 9 and 10, it will be appreciated by those skilled in the art that the same or analogous improvements in the fit, appearance and economy of diapers 14 according to the present invention, with tape tab or patch fastener elements 76 (adjacent opposed lateral edges of the back portion 20), may be realized.” slip op. at 43
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“In particular, we find that (1) Petitioner’s proposed level of ordinary skill in the art is consistent with the prior art of record, (2) Benning, Karami ’626, Miyamoto ’499, Jacobs, Anderson, and Fernfors teach or suggest all the limitations of claims 1–54, (3) one of ordinary skill in the art would have combined Benning, Karami ’626, and at least one of Miyamoto ’499, Jacobs, Anderson, and Fernfors with a reasonable expectation of success, and (4) no objective evidence of nonobviousness has been presented in relation to claims 1–54. Weighing these underlying factual determinations, a preponderance of the evidence persuades us that claims 1–54 of the ’249 patent are unpatentable over Benning and Karami ’626, and the same combination further modified by Miyamoto ’499, Jacobs, Anderson, or Fernfors. Arctic Cat, 876 F.3d at 1361.” slip op. at 62
Patent outcomesUS 8,771,249 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,771,249 - Attends Healthcare Products, Inc. v. Paul Hartmann AGAll claims unpatentablePTAB · Feb 22, 2022 · IPR2020-01478 · APJ Hyun J Jung · IPR · Final written decision
Claims 1–30 are unpatentable; the Board found them obvious over combinations based on Benning and Karami ’626.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“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 had a bachelor’s degree in chemistry, physics, mechanical, chemical, or process engineering, or a related degree and 2–3 years of experience designing diapers” and would have been “familiar with different diaper wing configurations (e.g., integral- and separate-wing), nonwoven materials, cloth-like backsheets, and hook-and-loop fastening systems.” Pet. 14–15; Inst. Dec. 8. This level of skill in the art is consistent with the disclosure of the ’398 patent and the prior art of record.” slip op. at 10
- BurdenFwd all claims unpatentableUnpatentable
“Because we determine that the same claims are unpatentable over proposed combinations including Benning and Karami ’626, we do not reach these additional challenges to these claims. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359 (2018) (holding a petitioner “is entitled to a final written decision addressing all of the claims it has challenged”).” slip op. at 114
Patent outcomesUS 8,784,398 unpatentableNonecites Phillips · KSR · GrahamPatents in suitUS 8,784,398
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.