- Avx Corporation v. Greatbatch Ltd.Rehearing grantedPTAB · Jan 13, 2016 · IPR2015-00710 · APJ Jon B Tornquist · IPR · Rehearing
The Board granted rehearing in part and instituted review of claims 1, 2, 5–7, 10, 11, 16, 17, and 20 on anticipation and obviousness grounds; it denied rehearing on the remaining claims.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“When the Petition and Dr. Irazoqui’s testimony are considered in view of the Request for Rehearing, we agree that we overlooked Petitioner’s argument that the “gas flow passage” of Figure 2 extends from the upper surface of insulator 122 to the upper exterior of feedthrough 100, i.e., traverses the space between insulator 122 and washer 124. Pet. 35 (citing Ex. 1003, 7:18–21, 7:27–29). Given this evidence associating the “minute” gaps with the space between insulator 122 and washer 124, and in light of our current construction of “laminar delamination gap” requiring no specific dimensions for a “very thin gap,” we are persuaded that the evidence of record sufficiently supports Dr. Irazoqui’s testimony that one of ordinary skill in the art would understand that Fraley discloses a “laminar delamination gap,” under a construction requiring a “very thin space.” 3 Pet. 37–38; Ex. 1002 ¶ 52 (p. 45). Accordingly, for the reasons discussed below, we grant-in-part and deny-in-part Petitioner’s Request for Rehearing and institute inter partes review on the grounds set forth below.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“7. Conclusion Based on the foregoing, we are persuaded that Petitioner has demonstrated a reasonable likelihood that claims 1, 2, 5–7, 10, 11, 16, 17, and 20 of the ’553 patent are anticipated by Fraley; we are not persuaded that claims 3, 4, 8, 9, 12–15, 18, and 19 of the ’553 patent are anticipated by Fraley.” slip op. at 12
- BurdenMixed
“of the Request for Rehearing, we agree that we overlooked Petitioner’s argument that the “gas flow passage” of Figure 2 extends from the upper surface of insulator 122 to the upper exterior of feedthrough 100, i.e., traverses the space between insulator 122 and washer 124. Pet. 35 (citing Ex. 1003, 7:18–21, 7:27–29). Given this evidence associating the “minute” gaps with the space between insulator 122 and washer 124, and in light of our current construction of “laminar delamination gap” requiring no specific dimensions for a “very thin gap,” we are persuaded that the evidence of record sufficiently supports Dr. Irazoqui’s testimony that one of ordinary skill in the art would understand that Fraley discloses a “laminar delamination gap,” under a construction requiring a “very thin space.” 3 Pet. 37–38; Ex. 1002 ¶ 52 (p. 45).” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We are not persuaded by Patent Owner’s argument because Exhibit 2008, relied upon by Patent Owner to support its argument, instructs that “[a] braze fillet should ideally be very small.” Ex. 2008, 1; see also id. at 2 (“Keep the fillet small. Remember, all the good things about a braze joint are happening INSIDE the joint, not in the outside fillets.”). Thus, on this record, regardless of any variation in the size of the braze-fillet, Patent Owner’s evidence and attorney argument do not demonstrate that the space between insulator 122 and washer 124 would be “substantial.” Based on the foregoing, and upon review of Petitioner’s and Patent Owner’s arguments, the evidence of record, and the supporting testimony of Dr. Irazoqui, we are persuaded that Petitioner demonstrates a reasonable likelihood that claims 1 and 16 of the ’553 patent are anticipated by Fraley.” slip op. at 8
§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,327,553 - C&D Zodiac, Inc. v. B/E Aerospace, Inc.Some claims unpatentablePTAB · Oct 26, 2015 · IPR2014-00727 · APJ Michael J Fitzpatrick · IPR · Final written decision
Claims 1, 3–7, 9, 10, 12–14, 16–19, 21, 22, 24–29, 31, and 33–37 are unpatentable as obvious over Betts; claims 8, 20, 30, and 38 were not shown unpatentable over Betts and the Orange Book.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“The term “enclosure unit” encompasses lavatories, aircraft closets, and aircraft galleys. Given the grounds of unpatentability that Petitioner raises, there is no need to further construe this term. 2. “lavatory stall unit” Whereas independent claim 1 recites “enclosure unit,” independent claim 9 recites “lavatory stall unit.” Patent Owner proposes the latter be construed as “a single room, enclosed on all sides, having a toilet and washbasin and large enough to fit a person inside.” PO Resp. 12. For reasons similar to those with respect to “enclosure unit,” we reject Patent Owner’s proposed construction of “lavatory stall unit.” Further, given the grounds of unpatentability that Petitioner raises, there is no need to provide an express construction for this term. More specifically, Petitioner does not rely on any particular prior art lavatory. Indeed, Petitioner does not rely on either of the asserted references to teach a “lavatory stall unit,” instead relying on the knowledge and skill of a person of ordinary skill in the art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“These proposed constructions would render the claim language “in a vertical plane” meaningless because tilting a seatback between an upright position and another position would have no effect on the shape of the aft surface of the seatback. Therefore, we do not adopt them. See Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1115 (Fed. Cir. 2002) (proposed construction that rendered a portion of the claim language meaningless held improper). Rather, we construe “in a vertical plane” according to its ordinary and customary meaning and consistent with the specification, which contrasts a forward wall in a vertical plane (see Fig. 1—the prior art) against a recessed forward wall (see Fig. 2—an embodiment of the claimed invention). In sum, the full limitation at issue encompasses an aft portion (in the case of claim 1) and an aft portion with an exterior aft surface (in the case of claims 9, 21, and 31) that has a flat shape but which is not within a vertical plane. This is within the broadest reasonable construction in light of the Specification, which discloses a substantially conforming recessed forward wall positioned behind the seat (see Ex. 1001, Fig. 2), as opposed to a wall that is flat in a vertical plane (see id. at Fig. 1). 4. “forward wall portion is shaped to substantially conform to the shape of the” slip op. at 10
- BurdenFwd mixedMixed
“As discussed below, Petitioner has shown by a preponderance of the evidence that claims 1, 3–7, 9, 10, 12–14, 16–19, 21, 22, 24–29, 31, and 33–37 of the ’838 patent are unpatentable as obvious over Betts. But, Petitioner has not shown by a preponderance of the evidence that claims 8, 20, 30, and 38 are unpatentable as obvious in view of Betts and the Orange Book, as Petitioner has not established that the evidence relied upon within the Orange Book is a printed publication.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“motivated to efficiently use space on an aircraft, as evidenced by Betts, “to provide more room for passengers.” Id. ¶ 65 (quoting Ex. 1003, 1:6–7). Mr. Anderson further testifies that Betts teaches the person of ordinary skill in the art a recessed forward wall configuration that uses space more efficiently than a flat configuration, and that a person of ordinary skill in the art would have been motivated to apply the recessed configuration to other aircraft enclosures, including lavatories. Patent Owner argues that a person of ordinary skill in the art “would have been discouraged from attempting to tailor Betts’ divided space design to any lavatory stall unit (or any other enclosure unit) because Betts required separate enclosures divided both functionally and spatially.” PO Resp. 29. But, Petitioner’s ground of unpatentability is not premised on whether it would have been practical or possible to convert Bett’s “divided space” (i.e., its overhead coat compartment and floor luggage space) into a lavatory. Rather, Petitioner argues that it would have been obvious to apply Bett’s recessed forward wall design to other aircraft enclosures, including a lavatory. Pet. 19 (“One of ordinary skill in the art would recognize that the teachings of the McDonnell Douglas patent [i.e., Betts] are equally applicable to the forward walls of other enclosure units, such as lavatories or galleys.”) (citing Ex. 1009 ¶¶ 65–68); cf. In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (“Etter’s assertions that Azure cannot be incorporated in Ambrosio are basically irrelevant, the criterion being not whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.”); In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the 15 features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”).” slip op. at 15
Patent outcomesUS 8,590,838 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,590,838 - Scentair Technologies, Inc. v. Prolitec, Inc.All claims unpatentablePTAB · Jul 18, 2014 · IPR2013-00180 · APJ Christopher L Crumbley · IPR · Final written decision
Claims 1, 3-5, 9-13, 15, 22-24, 26, 28, and 33 are unpatentable as obvious over Le Pesant and Privas.
RulingsFinal written decision- BurdenMixed
“Dr. Shedd, ScentAir has not carried its burden of proving that Le Pesant would have suggested to one with ordinary skill in the art selecting a control scheme based on the volume of the space to be treated. Le Pesant’s only discussion of volume is in the context of diffused droplet size. The reference discusses the use of a droplet size that results in a “dry fog,” and states that “[m]eans of diffusing very small droplets in high numbers like this are well suited to the volume of 16 residential rooms and meeting rooms, typically containing air volumes of between 30 and 100 cubic meters.” Ex. 1005, 10:5-10. Contrary to ScentAir’s interpretation, however, this statement does not disclose that the device of Le Pesant may be used in 30-100 cubic meter rooms. Rather, Le Pesant is stating diffusion means which result in a “dry fog” droplet size are suitable for such volumes. Nor does Le Pesant disclose that the programming of its device should be adjusted according to the volume of the room; Le Pesant merely suggests that its device is suitable for various volumes. The reference is silent as to whether adjustments to the programming of the device are necessary for the device to operate in these various volumes.5 Le Pesant, therefore, does not suggest selecting a control scheme based on volume. Nor does Dr. Garris’ testimony that it is “common sense” that concentration of diffused liquid is affected by volume (Ex. 1004 ¶ 22) provide the necessary reason to modify Le Pesant. A known relationship between concentration and volume does not provide a reason to modify the device to take advantage of that relationship, especially when at least one interpretation of Le Pesant suggests that no modification is necessary. ScentAir has not articulated a persuasive reason” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“Prolitec asks that we construe control schemes as “a set of operational parameters for the appliance.” PO Resp. 6. ScentAir does not proffer a particular construction, but Prolitec notes that, in related district court litigation, ScentAir defined the term as “systematic plan of control.” Id. (citing Ex. 1015, 3). We decline to adopt either construction as the broadest reasonable interpretation of the claim language. Prolitec’s construction, “a set of operational parameters for the 8 appliance,” merely repeats language used in the claim immediately following control schemes, and therefore, adds nothing to the understanding of the term. See, e.g., Ex. 1001, 9:27-29 (“each of the control schemes specifying operational parameters for the appliance”). In addition, by focusing on the “operational parameters” aspect of the control scheme, Prolitec’s construction ignores that the control schemes are relationships between inputs and those operational parameters, which may be selected by the user according to some other criteria. This feature was repeatedly emphasized by Prolitec’s counsel at oral argument. Tr. 34 (“adjusting all of these other variables automatically according to that easy to estimate variable . . . in our view that's the whole point of the ’068 control schemes.”). ScentAir’s district court claim construction, by focusing on a “systematic plan of control,” similarly errs by focusing only on the output of the control scheme, and not also on the input. Based on the foregoing, we consider the broadest reasonable interpretation of a plurality of control schemes to be a system of correlations between particular inputs and particular outputs for controlling the diffusion means, which permits a user to select a particular correlation based on user criteria.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMotivation foundMixed
“Prolitec argues that this rationale fails to provide a reason to combine the references, contending that Le Pesant does not express a “desire” to treat various volumes and that Privas does not disclose volume-based control. PO Resp. 36. We disagree with the latter argument, as we have already found that Privas discloses selecting a “set point” based—at least in part—on the volume of the space to be treated. With respect to the former argument, we find that Le Pesant discloses treating rooms of varying volumes, at least ranging between 30 and 100 cubic meters. Ex. 1005, 10:8-10. As discussed above, this does not provide a reason to modify Le Pesant to include volume-based control, but we conclude that it provides sufficient reason to combine Le Pesant with Privas, which discusses volume-based control. A person of ordinary skill in the art seeking to use the liquid diffusion device of Le Pesant in rooms of varying volumes would have reason to incorporate the volume based-control of Privas’ liquid diffusion device.” slip op. at 21
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“A prior art reference is considered to be analogous if it is either: 1) from the same field of endeavor, regardless of the problem addressed; or 2) reasonably pertinent to the particular problem with which the inventor is concerned, regardless of the field of endeavor. See In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). “A 21 reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” Id. at 659. The determination of whether a prior art reference is analogous is a factual one. Id. at 658. We find that Privas is analogous art, as it is from the “same field of endeavor” as the ’068 patent. Prolitec argues that Privas is directed to fumigation devices, whereas the ’068 patent is directed to atomizers. PO Resp. 30-31. Prolitec cites the testimony of Dr. Shedd, who notes that the two devices operate under different principles of diffusion. Id. (“In an atomizer like the ’068 patent device, fluid is diffused in a liquid state but in Privas it is diffused in a gaseous state.”) (citing Ex. 2001, ¶¶ 44, 82). ScentAir asserts that Privas is from the same field of endeavor as the ’068 patent, noting that the Privas fumigation device contains both an atomizer and an evaporator. Pet. Reply 10. ScentAir cites Dr. Garris’ testimony that the Privas device is “structurally and functionally akin to the subject matter of the ’068 patent—but with an additional diffusion means.” Id. (citing Ex. 1019 ¶ 35). We do not consider the additional evaporator of Privas as somehow removing Privas from the same field of endeavor as the ’068 patent. Both devices are used treat the air within a space using diffusion means that comprise an atomizer. Prolitec has not pointed us to any functional difference that would distinguish the devices in a meaningful way. Tr. 48 (“JUDGE CRUMBLEY: At least some portion of [Privas’] operation is the same as ScentAir’s. MR. BAISH: That’s true, yes.”). Indeed, the devices of Privas and the ’068 patent have 22 significant structural similarities, including the reservoir of liquid and the atomizer/venturi. These structural and functional similarities would have led one of ordinary skill in the art working in the field of atomizing devices, such as those of the ’068 patent, to consider similar devices, such as the fumigator of Privas. See In re Bigio, 381 F.3d 1320, 1325-26 (Fed. Cir. 2004).” slip op. at 21
Patent outcomesUS 7,930,068 unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 7,930,068 - PTAB · May 20, 2014 · IPR2013-00124 · APJ Lora M Green · IPR · Final written decision
The Board granted cancellation of claims 1-26 and allowed substitute claims 27-44, but denied substitute claim 45 as unpatentable over Behan.
RulingsFinal written decision- ScopeMotion to amend, grantedGranted
“patent claims. 35 U.S.C. § 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii).” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“partes review must set forth “[t]he support in the original disclosure of the patent for each claim that is added or amended.”” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundMixed
“In order to establish a prima facie case of obviousness based on structural similarity, the prior art must provide a reason to make the claimed compound, and there must also be “„adequate support in the prior art‟ for the 7 P.E.A. Teal et al., (Z)-11-Hexadecen-1-ol: A Behavioral Modifying Chemical Present in the Pheromone Gland of Female Heliothis Zea (Lepidoptera:Noctuidae), 116 CAN. ENTOMOLOGY 777-79 (1984). Ex. 2003. 8 Yih-Shen Hwang et al., Structure-Activity Relationship of Unsaturated Fatty Acids as Mosquito Ovipositional Repellents, 10 J. OF CHEM. ECOLOGY 145-51 (1984). Ex. 2004. change in structure.” Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1356 (Fed. Cir. 2007) (quoting In re Grabiak, 769 F.2d 729, 731-32 (Fed. Cir. 1985)). The United States Court of Appeals for the Federal Circuit noted that the test for obviousness of a compound based on structural similarity is in accordance with the legal principles enunciated by the Supreme Court in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), specifically, that it is important to identify “„a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does‟ in an obviousness determination.” Takeda, 492 F.3d at 1356-57 (quoting KSR, 550 U.S. at 418). Thus, “in cases involving new chemical compounds, it remains necessary to identify some reason that would have led a chemist to modify a known compound in a particular manner to establish prima facie obviousness of a new claimed compound.” Takeda, 492 F.3d at 1357.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency foundDecided for petitioner
“We acknowledge that McMahon and the Zhang Declaration are evidence that the ordinary artisan would not have had a reasonable expectation that, because a compound is known to repel mosquitoes, such as Aedes aegypti, the compound would also repel ticks, such as Amblyomma variegatum. Claim 45, however, encompasses the use of isolongifolanone when R1 is a hydrogen atom and R2 is an oxygen atom, which is the same compound specifically taught by Behan. See Pet. 7-8 (showing the structure of isolongifolanone, and discussing how it is encompassed by the chemical formula set forth in claim 1). As discussed above, Behan teaches the use of isolongifolanone to repel mosquitoes or cockroaches. Patent Owner provides no evidence that ticks and mites would not be present on the same objects or areas where mosquitoes and cockroaches are found, which are the insects addressed by Behan. Thus, by applying the isolongifolanone taught by Behan to an object or airspace for the purpose of repelling mosquitoes or cockroaches, one would also inherently repel ticks and mites. “It is a general rule that merely discovering and claiming a new benefit of an old process cannot render the process again patentable.” In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); see also Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1377-78 (Fed. Cir. 2005) (noting that the realization of a new benefit of an old process does not render that process patentable); Bristol-Myers Squibb Co. v. Ben Venue Laboratories, Inc., 246 F.3d 1368, 1376 (Fed. Cir. 2001) (stating in the context of a claimed process that was drawn to the same use comprising the same steps of the prior art, “[n]ewly discovered results of known processes directed to the same purpose are not patentable because such results are inherent.”). We, therefore, conclude that the preponderance of the evidence does not support the patentability of proposed claim 45.” slip op. at 17
§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 7,579,016
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.