- PTAB · Sep 14, 2022 · IPR2022-00691 · APJ Richard H Marschall · IPR · Institution
The Board instituted IPR on claims 1–17, finding a reasonable likelihood of obviousness based on Goss, Winkleman, and House.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Under these circumstances, we find the first part of the Advanced Bionics framework is not satisfied because the Petition sets forth prior art and arguments that are not the same or substantially the same as that considered by the Examiner during prosecution. Accordingly, we decline to exercise our discretion to deny institution pursuant to 35 U.S.C. §325(d).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 institute inter partes review of the ’393 patent on all challenges set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art (“PHOSITA”) “would have at least a bachelor of science degree in chemistry, mineralogy, geological science, material science, chemical engineering, or mining engineering with at least two to five years of work experience relating to designing specific chemical mixtures including clay or other minerals, particularly absorbents.” Pet. 33 (citing Ex. 1006 ¶ 38). Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the record, including the prior art. See Prelim. Resp. 11; In re GPAC Inc., 57 F.3d at 1579. We adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther
“Based on our review of the record and the parties’ arguments, we determine that “removably clumpable” in independent claims 1 and 10 refers to a mixture having “a clump strength of ≤ 1.33 using the Standard Drop Method Test” in addition to the other aspects of the “removably clumpable” definition provided in the specification. See Ex. 1001, 5:24–36. This is the same conclusion we reached in IPR2022-00206, which addresses the same issues raised here. See AMCOL, IPR2022-00206, Paper 9, at 9–13. As we noted in that Decision, the paragraph containing the phrase “a clump strength ≤ 1.33 using the Standard Drop Method Test” appears within the “Definitions” section of the specification, and the use of the term “i.e.” just prior to the phrase signals an intent to define the limitation. See id. at 9–10; Ex. 1001, 3:63, 5:24–36.6 We also pointed out that the ’393 patent’s 5 Patent Owner further argues that Petitioner expressly acknowledges the correct definition of “removably clumpable,” but fails to apply it in its proposed construction or apply it to the prior art. Prelim. Resp. 19–21; Surreply 1–3. Petitioner argues that it properly incorporated the narrower definition in its analysis. See Reply 1–3. We address Petitioner’s challenges as to the “removably clumpable” limitation in our discussion of the merits below. 6 Relevant case law supports this interpretation of “i.e.” in the specification. See Edwards Lifesciences LLC v. Cook Inc., 582 F.3d, 1322 1334 (Fed. Cir. 2009) (“As the court correctly reasoned, the specification’s use of ‘i.e.’ signals an intent to define the word to which it refers, . . . and that definition was not limited to the embodiment being discussed.”); Abbott Labs. v. Novopharm Ltd., 323 F.3d 1324, 1327–28, 1330 (Fed. Cir. 2003) (holding that the specification’s use of “i.e.” defined the limitation); SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1201 (Fed. Cir. 2013) (finding that reading “‘beads (i.e., two-dimensions)’ as definitional comports with the plain language of the specification as a whole and the inventors clearly expressed Example 26, which discloses a clump strength of ≤ 1.33 at the 24-hour mark but clump strengths above 1.33 at the three other time periods, still falls within the scope of the definition of “removably clumpable.” AMCOL, IPR2022-00206, Paper 9 at 11–12. The “definitional paragraph” relied on by Patent Owner notes that “[a] litter material having a clump strength of ≤1.33 using the Standard Drop Method Test (described below) [at] 30 seconds, 1 hour, 12 hours, 24 hours, 36 hours or 72 hours after the clump is formed by exposure to a liquid is removably clumpable.” Ex. 1001, 5:28–33 (emphasis added); Prelim. Resp. 17–18 (referring to “definitional paragraph” that includes this language). Use of the disjunctive “or” in that sentence indicates that a litter having the required clump strength at any of the listed time intervals falls within the scope of “removably clumpable.” Based on the foregoing, we again conclude that “removably clumpable” in independent claims 1 and 10 requires, at a minimum, a mixture having “a clump strength of ≤ 1.33 using the Standard Drop Method Test . . . 30 seconds, 1 hour, 12 hours, 24 hours, 36 hours or 72 hours after the clump is formed.” Ex. 1001, 5:28–32 (emphasis added).” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 9,439,393 - Ocado Group PLC v. Autostore Technology AsNo claims unpatentablePTAB · Jun 27, 2022 · IPR2021-00311 · APJ Alyssa A Finamore · IPR · Final written decision
Claims 1–4 and 11–15 were not shown unpatentable because Petitioner did not establish that the claimed motor control electronics location would have been obvious.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art (“POSITA”) would have had “at least a bachelor’s degree in mechanical engineering, and at least two to three years of experience working in the field of the design of robotic vehicles for material handling systems.” Pet. 15 (quoting Ex. 1015 ¶ 71). “Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art.” PO Resp. 3. In this Final Written Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art. We find, on the complete trial record, that this definition is consistent with the level of ordinary skill reflected in the asserted references and the ’140 patent.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In view of the issues in this inter partes review and the parties’ acquiesces to certain constructions, the parties acknowledge there are no claim construction issues. See Tr. 8:25–9:1 (Petitioner contending “[t]here are, I believe, no additional or remaining claim construction issues”), 34:6–8 (Patent Owner asserting “[a]s acknowledged by the Petitioner, there are no claim construction issues which need to be resolved by this Panel”). We similarly determine that no claim term requires an express construction for us to ascertain whether Petitioner has shown the challenged claims to be unpatentable.” slip op. at 17
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“for locating the motor control electronics on the robot and that each choice would have been obvious to try. Ex. 1015 ¶ 122; Ex. 1036 ¶¶ 27–32. The Supreme Court set forth the standard for when a combination may be obvious to try: “When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp.” KSR, 550 U.S. at 421 (emphasis added). Furthermore, under our rules, “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). For the reasons that follow, Dr. Pfeifer’s obvious-to-try testimony is unpersuasive and lacking factual support. Dr. Pfeifer testifies that WO/055 specifically discloses the power components, control components, and drive components should be located in proximity to one another. Ex. 1036 ¶ 27 (citing Ex. 1003, 6:12–14, 20–29, 11:31–34, 12:16–18). Dr. Pfeifer also testifies that, in the in-wheel motor embodiment shown in Figure 17, WO/055 discloses batteries, i.e., power components, located within side walls 262 of lower part 264 of the housing next to the motors. Id. ¶ 28 (Ex. 1003, 14:31–38). According to Dr. Pfeifer, “given WO/055’s teaching that [motor control electronics] should be located near the drive motors and batteries, . . . placing the [motor control electronics] entirely in the volume between the wheels of each rolling set— in close proximity to the in-wheel drive motors and batteries—would have been obvious to try.” Id.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Ex. 1015 ¶ 122 (emphasis added). As we explained in the Decision at institution, however, the location of the battery, i.e., within side walls 262 of lower part 264 of housing 254, does not include the volume between the wheels, as Dr. Pfeifer testifies, because, as shown in Figure 17, wheels 256 are outside of side walls 262. Dec. 26–27. Thus, WO/055’s disclosure of placing the battery within the side walls of the lower part of the housing to reduce the size of the robot and lower the center gravity does not persuasively explain why a POSITA would have placed the motor control electronics within the volume between the wheels.” slip op. at 23
Patent outcomesUS 10,474,140 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,474,140 - Amcol International Corp. v. Oil-Dri Corporation Of AmericaInstitution deniedPTAB · Jun 10, 2022 · IPR2022-00206 · APJ Richard H Marschall · IPR · Institution
The Board denied institution because Petitioner did not show that House disclosed the construed “removably clumpable” limitation required by the challenged claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“purposes of institution, that House discloses the “removably clumpable” limitation when using the claim construction that Patent Owner proposes and that we adopt above. That construction requires “a clump strength of ≤ 1.33 using the Standard Drop Method Test . . . 30 seconds, 1 hour, 12 hours, 24 hours, 36 hours or 72 hours after the clump is formed,” but Petitioner provides no argument or evidence to support any conclusion that House discloses a mixture having such a clump strength. See Pet. 53–55. Instead, Petitioner assumes that its broader claim construction of “removably clumpable” applies, and does not attempt to show that House discloses the limitation using a narrower construction such as the construction we adopt here. See id. Patent Owner correctly points out that such a showing fails to establish that House discloses a “removably clumpable” mixture as the claims require because a “litter that clumps does not necessarily mean it is ‘removably clumpable’” under the proper construction. Prelim. Resp. 18– 19. Because all of Petitioner’s challenges depend on the assertion that House alone discloses the “removably clumpable” limitation in independent claims 1 and 10, Petitioner’s failure to establish, for purposes of institution, that House discloses the limitations fatally undermines its challenges. Based on the foregoing, we determine that Petitioner has not established sufficiently that House anticipates any of the independent claims or that the combination of House and Goss renders any of the challenged claims unpatentable. Accordingly, Petitioner has not demonstrated a reasonable likelihood of establishing the unpatentability of any challenged claim.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“determine that “removably clumpable” in independent claims 1 and 10 refers to a mixture having “a clump strength of ≤ 1.33 using the Standard Drop Method Test” in addition to the other aspects of the “removably clumpable” definition provided in the specification. See Ex. 1001, 5:24–36. The claim language, standing alone, sheds little light on this issue because it merely refers to a “removably clumpable” mixture. See id. at 50:4, 50:33. The specification provides further guidance as to the scope of the limitation because the applicant operated as its own lexicographer in defining the limitation in the specification. See id. at 5:24–36. Petitioner relies on the first sentence of the paragraph addressing “removably clumpable” in the specification, while Patent Owner relies on the entire paragraph in its proposed construction. See Pet. 18; Prelim. Resp. 12–13. We conclude that the definition of “removably clumpable” includes the phrase “a clump strength of ≤ 1.33 using the Standard Drop Method Test” for two reasons. First, the phrase appears within a paragraph devoted to addressing “removably clumpable” within a section of the specification titled “Definitions,” which at least suggests that the entire paragraph should be treated as definitional. See Ex. 1001, 3:63, 5:24–36. Second, as Patent Owner correctly points out, the use of the term “i.e.” just prior to the phrase signals an intent to define the limitation. See id. at 5:33–35 (“A litter that is removably clumpable, i.e., has a clump strength of ≤ 1.33 using the Standard Drop Method Test.”). This approach comports with cases finding that the use of “i.e.” in a specification indicates an intent to define the limitation in question.3” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“purposes of institution, that House discloses the “removably clumpable” limitation when using the claim construction that Patent Owner proposes and that we adopt above. That construction requires “a clump strength of ≤ 1.33 using the Standard Drop Method Test . . . 30 seconds, 1 hour, 12 hours, 24 hours, 36 hours or 72 hours after the clump is formed,” but Petitioner provides no argument or evidence to support any conclusion that House discloses a mixture having such a clump strength. See Pet. 53–55. Instead, Petitioner assumes that its broader claim construction of “removably clumpable” applies, and does not attempt to show that House discloses the limitation using a narrower construction such as the construction we adopt here. See id. Patent Owner correctly points out that such a showing fails to establish that House discloses a “removably clumpable” mixture as the claims require because a “litter that clumps does not necessarily mean it is ‘removably clumpable’” under the proper construction. Prelim. Resp. 18– 19. Because all of Petitioner’s challenges depend on the assertion that House alone discloses the “removably clumpable” limitation in independent claims 1 and 10, Petitioner’s failure to establish, for purposes of institution, that House discloses the limitations fatally undermines its challenges. Based on the foregoing, we determine that Petitioner has not established sufficiently that House anticipates any of the independent claims or that the combination of House and Goss renders any of the challenged claims unpatentable. Accordingly, Petitioner has not demonstrated a reasonable likelihood of establishing the unpatentability of any challenged claim.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“C. Anticipation and Obviousness Challenges Petitioner argues that House anticipates claims 1–5, 8, 10–14, and 16, and that the combination of House and Goss renders those same claims obvious. Pet. 3, 22–69. For both challenges, Petitioner relies solely on House as disclosing the “removably clumpable” limitation. See id. at 53–55, 63. Petitioner’s obviousness challenge assumes that House does not anticipate because House does not disclose “sodium bentonite” and “wherein sodium bentonite comprises at least 47% of the total external surface area of the mixture” based on the particle size distributions provided in House. Id. at 63. Petitioner does not argue that the claims would have been obvious even if House fails to disclose the “removably clumpable” limitation, or otherwise argue that the combination of House and Goss discloses the limitation even if House alone fails to do so. Id. Accordingly, Petitioner’s challenges turn on whether House alone expressly discloses the “removably clumpable” limitation.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 9,439,393 - Ontel Products Corporation v. Guy A. Shaked Investments Ltd.Some claims unpatentablePTAB · Apr 18, 2022 · IPR2020-01728 · APJ Alyssa A Finamore · IPR · Final written decision
Claims 1–3, 5–18, and 20 are unpatentable; claims 4 and 19 were not shown unpatentable, based on the listed anticipation and obviousness grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“1. “configured on top” Independent claim 1 recites “the plurality of heat insulating spacers” slip op. at 13
- Skill levelOther
“B. Level of Ordinary Skill in the Art The level of ordinary skill in the art is “a prism or lens” through which” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“D. Anticipation by Choi Petitioner challenges claims 1, 5, 8, 12, and 13 under 35 U.S.C. § 102,” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Cambridge Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016) (citing Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1360 (Fed. Cir. 2012)). An obviousness analysis must include a reason, based upon rational underpinnings, why a person of ordinary skill would have been motivated to modify the prior art to achieve the claimed invention. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (“To satisfy its burden of proving obviousness, a petitioner . . . must . . . articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007))). The requirement of a reason to combine is a safeguard against hindsight bias, which is characterized by the “temptation to read into the prior art the teachings of the invention in issue.” KSR, 550 U.S. at 421 (quoting Graham, 383 U.S. at 36).” slip op. at 10
Patent outcomesUS 9,591,906 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,591,906 - Ontel Products Corporation v. Guy A. Shaked Investments Ltd.No claims unpatentablePTAB · Apr 18, 2022 · IPR2021-00052 · APJ Frances L Ippolito · IPR · Final written decision
Claims 1–10 were not shown unpatentable because the Board found the obviousness grounds unpersuasive in light of the evidence of industry praise and acceptance.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art would have “a degree in mechanical engineering, or an equivalent field, and/or a minimum of four years of practical experience in product design, manufacturing, and related materials in the beauty and hair care industry, including with heated appliances.” Pet. 10–11 (citing Ex. 1002 ¶ 24). “[Patent Owner] does not dispute [Petitioner’s] proposed level of skill in this proceeding.” PO Resp. 9. In this Final Written Decision, we apply Petitioner’s definition of the level of ordinary skill in the art. We find, on the complete trial record, that this definition is consistent with the level of ordinary skill reflected in the asserted references and the ’562 patent.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner asserts that, “for the purposes of this Petition, none of the claim terms require express claim constructions, and they should instead be given their ordinary and customary meaning as understood by a [person of ordinary skill in the art] in view of the ’562 prosecution history.” Pet. 11 (citing 37 C.F.R. § 42.100(b)). Patent Owner agrees the claims should be given their ordinary and customary meaning, and Patent Owner does not propose any express claim construction. PO Resp. 9. For the reasons forth in our analysis of the asserted grounds of unpatentability, we determine that no claim term requires an express construction for us to ascertain whether Petitioner has shown the challenged claims to be unpatentable.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Even if we agree with Patent Owner that elongating projections 10 would have the undesirable side effect of decreasing the surface temperature, the drawback of decreased surface temperature does not necessarily disqualify the benefit of better bristle retention as a reason to elongate projections 10, as Petitioner proposes. See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that [a] motivating benefit comes at the expense of another benefit . . . should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”). We agree with Petitioner that bristle securement is important to enable the bristles to reliably space the heated surface from a user’s skin. Moreover, given Patent Owner’s reliance on Mr. Prehodka’s testimony that doubling the length of projections 10 would provide only an insubstantial increase in the overall surface area (Sur-reply 12), there is no dispute that lengthening projections 10 would result in an insubstantial decrease in temperature, which is inversely proportional to surface area (PO Resp. 23). As lengthening projections 10 would increase bristle retention, which is important to enable the bristles to provide a space between the heated surface and a user’s skin, and result in only an insubstantial decrease in temperature, we are persuaded a person of ordinary skill in the art would have prioritized the benefit of better bristle retention over the drawback of decreased surface temperature. Furthermore, we disagree with Patent Owner that Lim teaches away from lengthening heating elements that are monolithic with a heating plate. Lim teaches a concern about heating elements breaking with respect to a prior art brush having heating elements embedded in the surface of the roll. Ex. 1005 ¶ 29. Even if lengthening heating elements would make them more likely to break off, Lim’s hair iron includes elongate brushes 112, i.e., heating elements, that are monolithic with iron roll 110, i.e., heating plate. Id. ¶¶ 53–57, Fig. 4. As Lim’s hair iron includes elongate heating elements monolithic with a heating plate despite the concern of the heating elements breaking off, Lim does not discourage lengthening heating elements monolithic with a heating plate.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Furthermore, we disagree with Patent Owner that Lim teaches away from lengthening heating elements that are monolithic with a heating plate. Lim teaches a concern about heating elements breaking with respect to a prior art brush having heating elements embedded in the surface of the roll. Ex. 1005 ¶ 29. Even if lengthening heating elements would make them more likely to break off, Lim’s hair iron includes elongate brushes 112, i.e., heating elements, that are monolithic with iron roll 110, i.e., heating plate. Id. ¶¶ 53–57, Fig. 4. As Lim’s hair iron includes elongate heating elements monolithic with a heating plate despite the concern of the heating elements breaking off, Lim does not discourage lengthening heating elements monolithic with a heating plate. We further disagree with Patent Owner that Ida teaches away from lengthening heating elements that are monolithic with a heating plate. Although Ida may raise a concern about cleaning heating elements that are monolithic with a heating plate (Ex. 1018 ¶¶ 11–13), such a concern about cleaning the heating elements arises from the elements being monolithic with the heating plate, not the length of the heating elements. Thus, Ida’s teaching that cleaning heating elements monolithic with a heating plate is problematic does not discourage lengthening such heating elements. Moreover, Gress’s preferred embodiment lacking a monolithic construction does not teach away from lengthening heating elements that are monolithic with a heating plate. See In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (“[O]ur case law does not require that a particular combination must be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the current invention.”); see also id. at 1201 (holding “the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed”). Although Gress’s preferred embodiment does not include a monolithic construction, Gress nonetheless discloses an embodiment with projections 10 being monolithic with cover 8. Ex. 1011, 2:27–32, Figs. 1–3.” slip op. at 27
Patent outcomesUS 9,877,562 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,877,562 - CTC Global Corporation v. TS Conductor Corp.Institution deniedPTAB · Apr 4, 2022 · PGR2022-00002 · APJ Ken B Barrett · PGR · Institution
The Board denied institution because the petition did not show it was more likely than not that any challenged claim 1–6 was unpatentable under the asserted obviousness or § 112 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“A post-grant review may be instituted only if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2018). For the reasons given below, Petitioner has not established that it is more likely than not that at least one of the challenged claims of the ’036 patent is unpatentable. Accordingly, we do not institute a post-grant review of the challenged claims.” slip op. at 2
- BurdenNot shown unpatentable
“a. Reason to Combine A successful obviousness challenge requires articulated reasoning as to why a person of ordinary skill in the art would have been motivated to combine the prior art references’ teachings to arrive at the claimed subject matter. See Regents of Univ. of Cal. v. Broad Inst., Inc., 903 F.3d 1286, 1291 (Fed. Cir. 2018) (“An obviousness determination requires finding that a person of ordinary skill in the art would have been motivated to combine or modify the teachings in the prior art . . . .”); KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“a. Reason to Combine A successful obviousness challenge requires articulated reasoning as to why a person of ordinary skill in the art would have been motivated to combine the prior art references’ teachings to arrive at the claimed subject matter. See Regents of Univ. of Cal. v. Broad Inst., Inc., 903 F.3d 1286, 1291 (Fed. Cir. 2018) (“An obviousness determination requires finding that a person of ordinary skill in the art would have been motivated to combine or modify the teachings in the prior art . . . .”); KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)).” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. The Level of Ordinary Skill in the Art 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) (internal quotation marks and citation omitted).” slip op. at 9
Claim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 10,886,036 - PTAB · Mar 14, 2022 · IPR2021-01446 · APJ Alyssa A Finamore · IPR · Institution
The Board instituted IPR on claims 1–4, 6, 10, 12–17, 19–21, and 31 on all asserted grounds, finding a reasonable likelihood of success on at least one claim and declining discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). We may not authorize an inter partes review to be instituted “unless . . . the information presented in the petition filed under section 311 and any response filed under section 313 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 arguments and evidence presented by both parties, we determine Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition, and we decline to exercise discretion to deny institution. Therefore, we institute an inter partes review of the challenged claims (1–4, 6, 10, 12–17, 19–21, 31) under the grounds raised in the Petition, pursuant to 35 U.S.C. § 314(a). See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); see also Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018) (available at https://www.uspto.gov/patents-application-” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Factor 6: Other Circumstances, Including the Merits Although we need not undertake a full merits analysis when evaluating Fintiv factor 6, we consider the strengths and weaknesses of Petitioner’s case, where stronger merits may weigh against discretionary denial and weaker merits may favor exercising discretion to deny institution. Fintiv at 15–16. In our view, although some challenges of certain claims here may not be entirely persuasive at this point in the proceeding, concerning the majority of the challenged claims, as discussed above, we find Petitioner’s showing to be strong on the merits, as contrasted with Patent Owner’s weaker arguments on the merits at this stage. As discussed above, we find the preliminary record supports Petitioner’s assertions under Ground 1 that the claims would have been obvious over Arnold and do not find Patent Owner’s preliminary arguments over this ground persuasive. See supra Section II.D.1. Accordingly, we weigh this factor in favor of not exercising our discretion to deny institution. 3. Holistic Assessment of Factors Under Section 314(a) After analyzing the Fintiv factors with a holistic view of whether the efficiency and integrity of the system are best served by denying or instituting review, we determine that the factors, on balance, weigh in favor of not exercising discretion to deny institution here. Hence, we do not exercise our discretion under § 314(a) to deny institution.” slip op. at 44
- Obviousness (§103) › Motivation to combine / reasonable expectation of successOther
“We disagree with Patent Owner’s characterization of Petitioner’s asserted obviousness based on Arnold. Contrary to Patent Owner’s argument, Petitioner is not relying on the knowledge of an ordinary artisan to supply claim limitations missing from Arnold. Rather, Petitioner relies on the knowledge of an ordinary artisan to explain that an ordinary artisan would understand a particular teaching in Arnold to disclose a claim limitation. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (“[A] prior art reference must be ‘considered together with the knowledge of one of ordinary skill in the pertinent art.’” (quoting In re Samour, 571 F.2d 559, 562 (CCPA 1978)); In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (explaining that testimony from those skilled in the art may be used to explain the meaning of a reference). For example, Petitioner contends “[a]n ordinary artisan would have understood Arnold’s ‘road sign’ information presented on the ‘display system’ as being an output having an original format, as claimed.” Pet. 7 (citing Ex. 1003 ¶¶ 96–98, 133). Moreover, to the extent Petitioner is arguing an ordinary artisan would have understood Arnold discloses each and every claim limitation, “a disclosure that anticipates under § 102 also renders the claim invalid under § 103, for ‘anticipation is the epitome of obviousness.’” Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983) (quoting In re Fracalossi, 681 F.2d 792 (CCPA 1982)); see also Application of Pearson, 494 F.2d 1399, 1402 (CCPA 1974) (“[T]his court has sanctioned the practice of nominally basing rejections on § 103 when, in fact, the actual ground of rejection is that the claims are anticipated by the prior art. The justification for this sanction is that a lack of novelty in the claimed subject matter, e.g., as evidenced by a complete disclosure of the invention in the prior art, is the ‘ultimate or epitome of obviousness.’” (citations and footnote omitted)).” slip op. at 31
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Patent Owner also argues that Petitioner’s witness, Mr. Andrews, may not be credible because of some past relationship with Petitioner or its related companies. Prelim. Resp. 61–63. Mr. Andrews’s past relationship, without more, is not persuasive evidence that causes us to question Mr. Andrews’s credibility at this stage of the proceeding.” slip op. at 33
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,047,170 - Immersion Systems LLC v. Midas Green Technologies, LLCInstitution deniedPTAB · Jan 31, 2022 · PGR2021-00104 · APJ Frederick C Laney · PGR · Institution
The Board denied institution of PGR challenging claims 1, 5, 6, and 10, exercising discretion under § 324(a) based on the Fintiv factors.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Thus, a jury trial is scheduled to occur in the related district court litigation approximately four months prior to when a final written decision would be statutorily due in this post-grant review, and the district court has indicated that any changes to the schedule, including the trial date, are disfavored. We find these facts weigh in favor of exercising discretion to deny institution under this factor.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundOther
“For example, under Petitioner’s Ground 1, although Petitioner’s and its witness’s (Dr. Mudawar’s) interpretations of the prior art as teaching the claimed subject matter are not unreasonable, the interpretations are not particularly clear or strong. Pet. 14–27. Petitioner pieces together portions from Best, Krajewski, and/or Cray that do not explicitly disclose the claimed subject matter, relying instead on Dr. Mudawar to interpret the references’ disclosures as meeting specific claim limitations. Id. Further, Petitioner, for the most part, asserts that each limitation of, for example, independent claim 1, is individually disclosed by one or more of Best, Krajewski, and/or Cray without clearly explaining how one reference’s disclosed apparatus or system would be specifically modified by the ordinarily skilled artisan in view of the teachings of the others. Id. Moreover, when discussing a motivation to combine Best, Krajewski, and/or Cray, Petitioner relies on the fact that they are directed to analogous art and then, primarily, that the features they teach would achieve the same advantages extolled by the ’446 patent itself for its claimed invention, which is not strong support that the prior art would have been combined or modified absent some improper hindsight. Id. at 30–35. Thus, although Petitioner may have made a sufficient showing for” slip op. at 16
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,820,446 - Echelon Fitness Multimedia, LLC v. Peloton Interactive, Inc.All claims unpatentablePTAB · Jan 25, 2022 · IPR2020-01187 · APJ Alyssa A Finamore · IPR · Final written decision
Claims 14–18 are unpatentable as obvious over Watterson and Hurwitz, and over Hurwitz, Garcia, and Martens.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“has persuaded us that a POSITA would have used Hurwitz’s comparative display with Watterson’s live and archived exercise classes. That notwithstanding, we agree with Petitioner that Hurwitz teaches a start button to signal the start of a class. Ex. 1004, 7:50–63; Figs. 2, 15. Although Patent Owner argues Watterson’s exercise classes have particular start times, having a start time does not dismiss the need to signal the start of a class. For example, as Petitioner argues, a participant engaged in a warm-up for an exercise class scheduled to start at a particular time would benefit from a signal indicating the start of the class. Reply 19 (citing Pet. 41; Ex. 1003 ¶¶ 194, 196; Ex. 1056 ¶¶ 11–12). Accordingly, we are persuaded that a POSITA would have used Hurwitz’s start button for signaling the start of classes to similarly signal the start of Watterson’s live and archived exercise classes. See KSR, 550 U.S. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”).” slip op. at 52
- ExcludeMotion to exclude, deniedDenied
“Declaration (Ex. 2004) and Exhibits 2009–2011 and 2014–2019. Mot. 1. Even if we consider the material Petitioner seeks to exclude, we determine Petitioner has proven, by a preponderance of the evidence, that the subject matter of claims 14–18 would have been obvious in view of Watterson and Hurwitz, and that the subject matter of claims 14–18 would have been obvious in view of Hurwitz, Garcia, and Martens. We, therefore, dismiss Petitioner’s motion as moot.” slip op. at 82
Patent outcomesUS 10,022,590 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,022,590 - Echelon Fitness Multimedia, LLC v. Peloton Interactive, Inc.All claims unpatentablePTAB · Jan 25, 2022 · IPR2020-01186 · APJ Alyssa A Finamore · IPR · Final written decision
Claims 5–8 and 15–18 are unpatentable as obvious over Watterson and Hurwitz, and over Hurwitz, Garcia, and Martens.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“levels of ordinary skill in the art differ in that Patent Owner’s proposed level of ordinary skill in the art adds the requirement for a bachelor’s degree and/or least two years’ experience in the exercise field. Patent Owner’s basis for the additional requirement is that an understanding of the equipment and practices in the exercise field is necessary to know what motivates people to exercise. We, however, agree with Petitioner that the 8 USPTO, Patent Trial and Appeal Board Consolidated Trial Practice Guide November 2019, https://www.uspto.gov/TrialPracticeGuideConsolidated (“TPG”); see also Office Patent Trial Practice Guide, November 2019 Edition, 84 Fed. Reg. 64,280 (Nov. 21, 2019) (notifying the public of the availability of the Consolidated Trial Practice Guide). problems and solutions in the art are not directed to figuring out what motivates people to exercise, but rather to developing and implementing network-connected computer systems to foster a group activity and competition, which are known motivations for exercise.” slip op. at 15
- Expert testimonyPetitioner expert creditedDecided for petitioner
“with the latter, our Trial Practice Guide8 explains that there is no requirement of a perfect match between a declarant’s experience and the relevant field. TPG 34 (citing SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010)). We generally permit testimony where a declarant’s scientific, technical, or other specialized knowledge will help the Board understand the evidence or to determine a fact in issue. Id. (citing Fed. R. Evid. 702(a)). Given his doctorate degree in computer science and 25 years’ of experience in the design and implementation of network-based applications, including network-based applications for providing multi-media content for real-time synchronous interaction (Ex. 1003 ¶ 41), we find Dr. Jeffay’s testimony helpful in deciding factual issues in this proceeding. Moreover, when assigning weight to a declarant’s testimony, we consider the underlying facts or data upon which the testimony is based. TPG 40–41. In our analysis of the asserted grounds of unpatentability, we weigh Dr. Jeffay’s testimony accordingly.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Furthermore, we expressly construe the claims to the extent necessary to determine whether Petitioner has proven that the challenged claims are unpatentable. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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))). Patent Owner argues the claims should be construed to require a method that displays both live and archived classes. PO Resp. 7–12. Patent Owner also argues the recited phrase “live and archived exercise classes” should be construed to require a human instructor. Id. at 12–16. Additionally, the parties propose express constructions for the claim term “leaderboard.” Id. at 16–18; Reply 7–8; Sur-reply 6–8. Specifically, Petitioner construes “leaderboard” as “a display of those leading in a contest” (Reply 7), whereas Patent Owner construes “leaderboard” as “a numerically ordered list ranking users by their performance” (PO Resp. 16) and further argues “the district court effectively agreed with [Patent Owner] (construing leaderboard as ‘a scoreboard containing a list in ranked order of some or all of the users’)” (Sur-reply 6). Nonetheless, for the reasons set forth in our analysis of the asserted grounds of unpatentability, we determine that no claim term requires an express construction for us to ascertain whether Petitioner has shown the challenged claims to be unpatentable because Petitioner has met its burden even if we apply Patent Owner’s proposed constructions.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“In view of the foregoing, Petitioner has persuaded us that Watterson discloses archived user performance parameters. Petitioner also has persuaded us that archiving user performance parameters during live and stored exercise classes is well within the level of ordinary skill in the art. Because a POSITA would understand how to archive performance parameters, we disagree with Patent Owner that a POSITA would have considered Petitioner’s proposed combination inoperable for displaying comparative data during live and archived exercise classes such that Watterson and Hurwitz teach away from Petitioner’s proposed combination. Rather, Petitioner has demonstrated, with particularity, that a POSITA would have reasonably expected Petitioner’s proposed combination of the teachings Watterson and Hurwitz to be operable to display comparative data during live and archived exercise classes.” slip op. at 33
Patent outcomesUS 10,322,315 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,322,315
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.