- Resmed, Inc. v. New York UniversityAll claims unpatentablePTAB · Dec 6, 2023 · IPR2022-00994 · APJ Alyssa A Finamore · IPR · Final written decision
Claims 1, 3, 7, 9, 11, and 13 are unpatentable as obvious over Sullivan995, Sullivan460, and Matthews; the Board did not reach the other grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner
“the specification . . . we do not read limitations from the embodiments in the specification into the claims.” Hill-Rom Servs., 755 F. 3d at 1371 (citing Liebel–Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 904 (Fed. Cir. 2004)). “We depart from the plain and ordinary meaning of claim terms based on the specification in only two instances: lexicography and disavowal.” Id. In order for a patentee to act as its own lexicographer, the “patentee must ‘clearly set forth a definition of the disputed claim term other than its plain and ordinary meaning’” and “must ‘clearly express an intent’ to redefine the terms.” Bradium Tech., 923 F.3d at 1044.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in mechanical engineering, biomedical engineering, or a similar technical field, with at least two years of relevant product design experience” and that “[a]dditional experience could substitute for less education, and additional education could likewise substitute for less experience.” Pet. 23 (citing Ex. 1003 ¶ 89). Petitioner further contends that the “Petition does not turn on this precise definition, and the challenged claim[s] would be unpatentable from the perspective of any reasonable person of ordinary skill in the art at the relevant time.” Id. (citing Ex. 1003 ¶ 90). Patent Owner does not object to Petitioner’s definition for the level of ordinary skill in the art. PO Resp. 11. Petitioner’s definition for the level of ordinary skill in the art is consistent with the problems addressed in the ’344 patent and the prior art. We, therefore, apply Petitioner’s level of ordinary skill in the art in this Decision.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“At the outset, we agree with Petitioner that “enablement ‘is not a requirement to prove invalidity under § 103.’” Pet. Reply 23 (quoting Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1357 (Fed. Cir. 2003)). Moreover, we also agree with Petitioner that a person of ordinary skill in the art would have understood a preset level is established from previously-acquired data, such as an average level, as Sullivan995 discloses. Id. at 22 (citing Ex. 1005, 17:3–27, Fig. 12; Ex. 2015, 38:2–16). Sullivan995 discloses the computing system may “calculate control values of patterns for each patient based on moving average values or such values or patterns will be pre-programmed into the computing system.” Ex. 1005, 17:14–18. According to Sullivan995, when “signals deviate from predetermined values or patterns the computer system generates a signal which is sent to the feedback speed controller on the blower motor.” Id. at 17:19–22.” slip op. at 48
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“The Board uses a two-step analysis in evaluating nexus between the claimed invention and objective evidence. Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 33 at 32–33 (PTAB Jan. 24, 2020) (precedential), aff’d sub nom. Zaxcom, Inc. v. Lectrosonics, Inc., 2022 WL 499848 (Fed. Cir. Feb. 18, 2022). We first consider whether the patent owner has demonstrated “that its products are coextensive (or nearly coextensive) with the challenged claims,” resulting in a rebuttable presumption of nexus. Id. at 32. If not, that “does not end the inquiry into secondary considerations”; “the patent owner is still afforded an opportunity to prove nexus by showing that the evidence of secondary considerations is the ‘direct result of the unique characteristics of the claimed invention.’” Id. at 33 (quoting Fox Factory, 944 F.3d at 1373–75). “Where the offered secondary consideration actually results from something other than what is both claimed and novel in the claim, there is no nexus to the merits of the claimed invention.” Id. (citing In re Kao, 639 F.3d 1057, 1068–69 (Fed. Cir. 2011)). There is no requirement that the objective evidence of non-obviousness be tied exclusively to claim elements that are not disclosed in the prior art, and the claimed combination as a whole may serve as a nexus for the objective evidence. Id. (citing WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1331 (Fed. Cir. 2016)).” slip op. at 56
Patent outcomesUS 9,168,344 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,168,344 - Resmed, Inc. v. New York UniversityAll claims unpatentablePTAB · Dec 4, 2023 · IPR2022-00989 · APJ James A Tartal · IPR · Final written decision
Claims 1, 2, 5–11, 13, and 15–30 are unpatentable as obvious over Sullivan995 and Sullivan460; anticipation was not shown, and the other obviousness ground was not reached.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“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). Petitioner contends that a person of ordinary skill in the art would have had “at least a bachelor’s degree in mechanical engineering, biomedical engineering, or a similar technical field, with at least two years of relevant product design experience” and “[a]dditional experience could substitute for less education, and additional education could likewise substitute for less experience.” Pet. 19 (citing Ex. 1003 ¶ 77). Petitioner further states that the “Petition does not turn on this precise definition, and the challenged claims would be unpatentable from the perspective of any reasonable person of ordinary skill in the art at the relevant time.” Id. (citing Ex. 1003 ¶ 78). Patent Owner does not dispute Petitioner’s definition of the person of ordinary skill in the art. PO Resp. 15–16. We find that the ’539 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references and in the ’539 patent is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“awake state” Claim 24 recites, in part, “to determine whether breathing patterns indicate an asleep state or an awake state.” Ex. 1001, 11:36–12:7; see also id. at 9:49–64 (claim 1 reciting “between an awake state and an asleep state”), 10:42–56 (claim 11 reciting “at least one of an awake state or an asleep state”). In regard to its allegations of obviousness, Petitioner’s arguments suggest an “awake state” ordinarily means when a patient is not asleep. Pet. 36–37, 42. By contrast, with regard to its allegations of anticipation, Petitioner argues that under Patent Owner’s “implied construction of ‘an awake state’ based on [Patent Owner’s] infringement allegations” in district court, “the patient is in an awake state when there is an absence of obstructions or other breathing patterns indicative of sleep.” Id. at 68–70 (citing, e.g., Ex. 1018 ¶¶ 2, 158, 159). Petitioner provides no further support for this “implied construction” purportedly taken from Patent Owner’s district court allegations. Id. Dr. Kirkness, in support of Petitioner, applied the plain meaning of all terms and phrases. See, e.g., Ex. 1003 ¶ 80. In regard to supporting Petitioner’s allegations of anticipation, Dr. Kirkness merely assumed Patent Owner’s purported district court claim construction “position to be true.” Ex. 1003 ¶ 253. In this proceeding Patent Owner does not propose an express meaning for “awake state.” See PO Resp. 29–33. More generally, Patent Owner states that the ’539 patent “teaches how to distinguish between an awake state and an asleep state.” Id. at 8. From the arguments of the Parties, we discern no dispute in this proceeding that a plain and ordinary meaning of an “awake state” is a state in which a patient is not asleep. See Ex. 1001, 3:1–5 (distinguishing between “a wake state” and “a sleep state”), 7:22–24 (describing an embodiment with a processing arrangement that “may determine whether the patient is in a sleep state or a wake state based on the breathing pattern”).8 We apply the plain and ordinary meaning of “awake state” in this proceeding and further determine that Petitioner has not shown by a preponderance of the evidence that an awake state means “an absence of obstructions or other breathing patterns indicative of sleep.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner
“Next, we turn to the Specification. “While we read claims in view of the specification . . . we do not read limitations from the embodiments in the specification into the claims.” Hill-Rom Servs., 755 F. 3d at 1371 (citation omitted). “We depart from the plain and ordinary meaning of claim terms based on the specification in only two instances: lexicography and disavowal.” Id. In order for a patentee to act as its own lexicographer, the “patentee must ‘clearly set forth a definition of the disputed claim term other than its plain and ordinary meaning’” and “must ‘clearly express an intent’ to redefine the terms.” Bradium Tech., 923 F. 3d at 1044. In this case, Patent Owner does not argue that it disavowed the full scope of the plain and ordinary meaning of claim 24, nor does Patent Owner argue that it explicitly defined “analyzing the breathing patterns” in the Specification. See, e.g., PO Resp. 29–32. We determine that there is no disavowal nor any explicit lexicographic definition of “analyzing the breathing patterns” in the Specification. Patent Owner instead relies on an “implied lexicography” theory as to why we should construe the phrase as Patent Owner proposes. PO Sur-reply 2, 6–7 (citing, inter alia, AstraZeneca AB v. Mut. Pharm. Co., Inc., 384 F.3d 1333, 1339 (Fed. Cir. 2004)). We disagree.” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We disagree with Patent Owner’s arguments—that Petitioner fails to show any motivation to combine and that Sullivan460 is not enabled— merely because Dr. Kirkness indicated in a deposition that he did not know how a preset level is calculated from a sentence in Sullivan460. As Petitioner explains, enablement “is not a requirement to prove invalidity under §103.” Amgen, 314 F.3d at 1357 (under §103, “a reference need not be enabled; it qualifies as a prior art, regardless, for whatever is disclosed therein”). Moreover, we agree with Petitioner that the Challenged Claims do not require any preset level for a flow rate, and a person of ordinary skill “would have understood that a preset level is established from previously-acquired data or data from a previous window of time, such as an average level, for example, as taught in Sullivan995.” Pet. Reply 15 (citing Ex. 2014, 38:2–16; Ex. 1005, 17:3–27, Fig. 12). Patent Owner responds that Petitioner’s assertion is unsupported, and that “Petitioner is obligated to address this challenge, and failed to do so.” PO Sur-reply 18–19 (citing In re Morsa, 713 F.3d 104, 110 (Fed. Cir. 2013)). We find Petitioner’s arguments persuasive because they are supported by the asserted references. Sullivan995 discloses that the computing system may “calculate control values of patterns for each patient based on moving average values or such values or patterns will be pre-programmed into the computing system.” Ex. 1005, 17:14–18. According to Sullivan995, when “signals deviate from predetermined values or patterns the computer system generates a signal which is sent to the feedback speed controller on the blower motor.” Id. at 17:19–22. Based on this disclosure, and given that Sullivan460 incorporates Sullivan995 by reference, we agree with Petitioner that Sullivan460’s disclosure of detecting that the flow rate has fallen below a preset level would have informed a person of ordinary skill that this level was predetermined, so that “the controller 100 activates the nCPAP apparatus 90 to supply air to the patient 30 at a pressure which ameliorates or eliminates the upper airway flow limitation.”16 Ex. 1006, 10:17–21.” slip op. at 50
Patent outcomesUS 9,427,539 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,427,539 - Resmed, Inc. v. New York UniversityAll claims unpatentablePTAB · Dec 4, 2023 · IPR2022-00988 · APJ James A Tartal · IPR · Final written decision
The Board held claims 1–30 unpatentable by a preponderance of the evidence, based on the asserted obviousness grounds.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“ORDER21 Upon consideration of the record before us, it is: ORDERED that Patent Owner’s Motion to Exclude (Paper 45) is denied; FURTHER ORDERED that Petitioner’s Motion to Exclude (Paper 46) is denied;” slip op. at 82
- Skill levelOther
“B. Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“1. “troubled wakefulness” Dependent claims 12 and 22 each recite, “wherein the awake state is a” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“not implicitly define the phrase “analyzes the data to determine the patient’s breathing patterns,” as proposed, because Patent Owner has failed to show any sufficient evidence that the ’009 patent clearly expresses an intent to redefine the phrase or define the phrase in terms other than its plain and ordinary meaning. In other words, implied lexicography does not apply here. Accordingly, after reviewing Patent Owner’s contentions in light of all the evidence of record, we do not adopt Patent Owner’s proposed construction; instead, we apply the plain and ordinary meaning of “analyzes the data to determine the patient’s breathing patterns” in our consideration of the issues before us.” slip op. at 32
Patent outcomesUS 9,108,009 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,108,009 - PTAB · Nov 21, 2023 · IPR2023-01165 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR of claims 1–20 on all petition grounds, finding a reasonable likelihood that Peloton would show at least one claim obvious over Morris and Ray.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons given below, on this record, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review of the Challenged Claims on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“G. Level of Ordinary Skill in the Art Petitioner, supported by Mr. Rawl’s testimony, proposes that a person of ordinary skill in the art at the time of the invention “is a person having: (i) a bachelor’s degree in an exercise related field or mechanical or electrical engineering and (ii) three to five years of industry experience in designing cardiovascular exercise equipment (such as treadmills, bicycles, steppers, ellipticals) or in a similar field.” Pet. 12 (citing Ex. 1002 ¶¶ 31–34).6 Petitioner also asserts that a person could qualify as an ordinarily skilled artisan with less education but more experience or less experience but more education. Id. (citing Ex. 1002 ¶¶ 31–34). Patent Owner has not taken a position as to the level of ordinary skill in the art at this stage of the proceeding. At this stage of the proceeding and on the present record, we find that Petitioner’s uncontested level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’340 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt Petitioner’s level of ordinary skill in the art, as articulated above, in our consideration of the issues presently before us.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. See 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)). Petitioner “does not believe construction of any term is necessary to resolve the invalidity challenges in this Petition.” Pet. 11 (citing Ex. 1002 ¶¶ 29–30). Petitioner explains that, as of the filing of the Petition, none of the claim terms recited in the ’340 patent have been construed in a prior proceeding. Id. Patent Owner has not taken a position as to claim construction at this stage of the proceeding. On the present record, we need not construe any claim terms expressly because none are in dispute. See Realtime Data, 912 F.3d at 1375.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“3. Motivation to Combine and Reasonable Expectation of Success Petitioner contends Morris and Ray describe exercise equipment (e.g., treadmills) that detect a user’s presence while using the equipment and present the user’s exercise data on a display while a user is exercising to motivate the user to exercise and improve the user’s exercise experience. Pet. 12. Petitioner asserts one of ordinary skill in the art would have been motivated to combine the complementary teachings of Morris and Ray by incorporating Ray’s camera and software instructions for validating user exercise data in Morris’ treadmill apparatus with a reasonable expectation of success. Id. at 13. In particular, Petitioner contends Morris provides an express motivation to install and use Ray’s camera for user detection by teaching that “its exercise equipment could be fitted with optical sensor(s).” Id. (citing Ex. 1006 ¶ 33). Additionally, Petitioner asserts Morris’ treadmill includes an information processing system that processes sensor signals and includes virtual reality content on a screen displayed to the user. Id. (citing Ex. 1006 ¶¶ 32, 34–36, 50, 56–58, Figs. 6, 11–12C, claims 29–37). Thus, Petitioner contends “the signal processing and display system of Morris had the necessary capabilities to accommodate Ray’s user detection/validation software and implement, with a reasonable expectation of success, its functionalities that included producing and presenting the motivational image of the user exercising.” Id. at 13–14. Additionally, Petitioner contends one of ordinary skill in the art would have been motivated to combine the teachings of Morris and Ray because of “Ray’s express teachings that its user validation/motivation technology could be ‘easily and affordably merged’ into a treadmill.” Pet. 14 (quoting Ex. 1004, 9:55–57). Petitioner asserts incorporating these features into Morris’ treadmill “would have been obvious and produced predictable results with a reasonable expectation of success.” Id. (citing Ex. 1002 ¶¶ 142–143).” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,227,340 - PTAB · Nov 21, 2023 · IPR2023-01164 · APJ James P Calve · IPR · Institution
The Board instituted IPR on claims 1–20 because Peloton showed a reasonable likelihood of prevailing on claims 1, 2–7, and 10–20 over Morris and Ray.
RulingsInstitution decision- 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) (2022) (“The Board institutes the trial on behalf of the Director.”). An 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 determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore grant institution of an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“degree in an exercise related field or mechanical or electrical engineering and (ii) three to five years of industry experience in designing cardiovascular exercise equipment (such as treadmills, bicycles, steppers, ellipticals) or in a similar field” Pet. 16 (citing Ex. 1002 ¶¶ 31–34). Petitioner also asserts that a person could qualify as an ordinarily skilled artisan with less education but more experience or less experience but more education. Id. At this stage, Patent Owner does not address the level of ordinary skill in the art. On the present record, we find that Petitioner’s uncontested level of ordinary skill in the art is consistent with the ’375 patent and the prior art of record. Therefore, we adopt Petitioner’s level of ordinary skill in the art, as articulated above, in our consideration of the issues presently before us.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose any claim constructions and asserts that” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“such as treadmills that detect a user’s presence on the treadmill and present the user’s exercise data on a display while the user is exercising to provide a number of similar benefits including motivating a user to exercise. Pet. 16– 17 (citing Ex. 1006 ¶¶ 5, 26, 35, Abstr.; Ex. 1004, 5:41–48, 8:22–26, 11:56– 61, 13:20–30, Abstr.). Petitioner contends that a skilled artisan would have been motivated to combine the complementary teachings of Morris and Ray that addressed these similar objectives to achieve predictable results. Id. at 16–17 (citing Ex. 1002 ¶¶ 137–140). Petitioner asserts that a skilled artisan would have incorporated Ray’s camera and software instructions to validate a user’s exercise data into Morris’ treadmill with a reasonable expectation of success because Morris expressly taught that “its exercise equipment could be fitted with optical sensor(s).” Id. at 17 (citing Ex. 1006 ¶ 33).” slip op. at 15
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,796,375 - PTAB · Nov 21, 2023 · IPR2023-01163 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board instituted review of claims 1–20 on all asserted grounds after finding a reasonable likelihood that claims 1–9, 12, and 14–20 would have been obvious over Morris and Ray.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“record, Petitioner has shown sufficiently that Morris and Ray, in combination, teach or suggest each element of independent claim 1. Petitioner has also sufficiently shown that one of ordinary skill in the art would have been motivated to combine the teachings of Morris and Ray as proposed and would have had a reasonable expectation of success in doing so. Accordingly, we determine that Petitioner has shown a reasonable likelihood that it would prevail in establishing that the subject matter of claim 1 would have been obvious over Morris and Ray.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“have been motivated to combine Morris and Ray by adding several of Ray’s features to Morris’ treadmill, including Ray’s camera, its functionality of displaying a motivational image, and its ability to transmit exercise data to a remote location, and that the ordinarily skilled artisan would have had a reasonable expectation of success in achieving the combination proposed. Pet. 16–18. Petitioner asserts that an ordinarily skilled artisan would have been motivated to combine Morris and Ray because they provide complementary teachings and address similar objectives. Pet. 16 (citing Ex. 1004, Abstr., 5:41–48, 8:22–26, 11:56–61, 13:20–30; Ex. 1006 ¶¶ 6, 25, 33, 35, Abstr.; Ex. 1002 ¶¶ 135–138). Petitioner also asserts that Morris contemplates use of an optical sensor, provides exercise data and “a human analog display that mimic[s] the user’s bouncing motion,” and includes a signal processing and display system with the necessary capabilities to implement the combination. Id. at 16–17 (citing Ex. 1002 ¶¶ 139–143; Ex. 1006 ¶¶ 32–36, 50, 56–58, claims 29–37, Figs. 6, 11–12C). Petitioner further asserts that Ray expressly teaches that “its user validation and motivation technology could be ‘easily and affordably merged’ into a treadmill.” Id. at 18 (quoting Ex. 1004, 9:55–57) (citing Ex. 1002 ¶¶ 143–144). Finally, Petitioner contends that an ordinarily skilled artisan would have been motivated to make the proposed combination because it would have improved Morris’ the user as the intensity and duration of exercise increased” and Ray’s ability to share exercise data with a remote location. Id. (citing Ex. 1004, 7:11–22, 11:55–59, 13:50–57; Ex. 1006 ¶ 50; Ex. 1002 ¶¶ 138, 145); see also id. at 16 (arguing user motivation would have motivated the combination) (citing Ex. 1004, 8:22–26, 11:56–61; Ex. 1006 ¶ 25). At this stage, we are persuaded that Petitioner has made a sufficient showing that one of ordinary skill in the art would have been motivated to combine Morris and Ray with a reasonable expectation of success.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose any express claim constructions and states that the “claims . . . have not been construed by any courts as of the filing of th[e] Petition.” Pet. 15 (citing Ex. 1002 ¶¶ 29–30). At this stage, Patent Owner does not address the construction of any term or phrase. We determine that it is not necessary to expressly construe any claim terms or phrases for purposes of this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to 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 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“steppers, ellipticals) or in a similar field.” Pet. 15 (citing Ex. 1002 ¶¶ 31– 34). Petitioner also asserts that a person could qualify as an ordinarily skilled artisan with less education but more experience or less experience but more education. Id. At this stage, Patent Owner does not address the level of ordinary skill in the art. At this stage of the proceeding and on this record, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that it comports with the level of skill necessary to understand and implement the teachings of the ’227 patent.” slip op. at 8
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,032,227 - Amphenol Corp. v. PPC Broadband, Inc.All claims unpatentablePTAB · Oct 23, 2023 · IPR2022-00719 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1–5, 8–15, and 18 are unpatentable as obvious over Youtsey, Lionetto, and Horak; the Board did not reach the alternative Tarrant and Bell ground.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“in that neither party proposes constructions for any specific claim terms. See generally PO Resp.; Pet. Reply; PO Sur-reply. Accordingly, based on our review of the complete record, we maintain and reaffirm that no explicit construction of any claim term is needed to resolve the issues presented by the parties and resolved in this Decision. See Realtime Data, 912 F.3d at 1375.” slip op. at 13
- Skill levelOther
“G. Level of Ordinary Skill in the Art Petitioner, supported by Dr. Dickens’ testimony, proposes that a” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“(f) Analysis and Conclusion as to Motivation to Modify Youtsey Having considered and balanced the prior art for all that it teaches,” slip op. at 89
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“For these reasons, Patent Owner’s first objective indicia argument is unavailing. Petitioner’s Patent Application Patent Owner argues that Petitioner, in its own U.S. Patent Application No. 13/530,831 (see Ex. 2013, “the ’831 Application”) filed several years after the ’983 patent’s priority date, took positions contrary to and belying Petitioner’s positions in this proceeding. See PO Resp. 2, 71–73. In particular, according to Patent Owner, the ’831 Application “included claims directed to the same coupler-body grounding member/path limitations at issue here,” demonstrating that “five of Petitioner’s own inventors (i.e., [persons of ordinary skill in the art]) understood that a coupler-body grounding member/path was patentable.” Id. (citing Ex. 2013, code (57), Figs. 4, 5, ¶¶ 3, 5, 14, 18, claim 1; Ex. 2014, 4:6–14; Ex. 2015, 3– 6; Ex. 2016, 2); PO Sur-reply 3; Ex. 2001 ¶¶ 190–199. Patent Owner cites Andersen Corp. v. Pella Corp., 300 F. App’x 893, 899–900 (Fed. Cir. 2008), as “finding statements made in the accused infringer’s own patent applications provided objective evidence that the challenged claims were not obvious.” PO Resp. 73. Petitioner in reply points out that the original claims of the ’831 Application were rejected by the Examiner, and the claims were not allowed until they were amended “to require the grounding member to be ‘exposed outside of the connector body,’ supporting that other features attribute to the non-obviousness of [Petitioner’s] claimed invention.” Pet. Reply 19–20; see Ex. 2014, 3:35–4:15 (issued claim 1 from the ’831 Application). Petitioner distinguishes the Andersen decision cited by Patent Owner as involving “long-felt need, the failure of others, unexpected results, copying, and praise by others,” none of which are present here. Pet. Reply 20. Patent Owner replies that the Examiner’s rejection in the ’831 Application “fails to change the fact that Petitioner’s own inventors thought that the original claims were nonobvious.” PO Sur-reply 3. Patent Owner additionally notes that the “rejection was based on a parent patent to the ’983 [p]atent,” which Patent Owner argues “confirm[s] that Petitioner’s inventors were trying to patent the same claimed invention believing it to be patentable.” Id. (citing Ex. 2015, 4–5).” slip op. at 94
Patent outcomesUS 10,446,983 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,446,983 - PTAB · Apr 13, 2023 · IPR2022-01547 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claims 1–7 and all petitioned grounds, finding a reasonable likelihood of success on at least claims 1, 2, and 4–7 over Loomis and Hodge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons given below, on this record, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review of the Challenged Claims on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“G. Level of Ordinary Skill in the Art Petitioner, supported by Dr. Lett’s testimony, proposes that a person of ordinary skill in the art at the time of the invention “would have been a person with a working knowledge of cache memory technologies.” Pet. 10 (citing Ex. 1003 ¶ 427). Petitioner contends that a person of ordinary skill in the art “would have had a Bachelor of Science degree in an academic discipline emphasizing the design of electrical, computer, or software technologies, in combination with experience with memory management technologies such as caching. Superior education or experience would compensate for deficiencies in either.” Id. at 10–11 (citing Ex. 1003 ¶ 42). Patent Owner states that “[f]or the purposes of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 13. At this stage of the proceeding and on the present record, we find that Petitioner’s uncontested level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’244 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt Petitioner’s level of ordinary skill in the art in our consideration of the issues presently before us.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. See 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)). Petitioner and Patent Owner agree that no claim terms require an express construction at this stage of the proceeding.8 Pet. 11; Prelim. 8 During a conference call and as documented in a joint email thereafter, (1) Petitioner acknowledged an error in the Petition, where it states that four claim elements should be construed instead of stating that no terms require construction and (2) Patent Owner agreed that Petitioner’s clarification mooted an argument raised on page 13 of the Preliminary Response regarding the error in the Petition. See Ex. 3001 (Email from D. Smith dated Feb. 17, 2023). Resp. 13. Accordingly, we need not construe any claim terms expressly because none are in dispute. See Vivid Techs., 200 F.3d at 803.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Whether an ordinarily skilled artisan would have been motivated to modify the teachings of a reference is a question of fact.” WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016) (citations omitted). “[W]here a party argues a skilled artisan would have been motivated to combine references, it must show the artisan ‘would have had a reasonable expectation of success from doing so.’” Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1360–61 (Fed. Cir. 2017) (quoting In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1154, 1068–69 (Fed. Cir. 2012)). slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,313,244 - PTAB · Apr 13, 2023 · IPR2022-01548 · APJ Nathan A Engels · IPR · Institution
The Board instituted inter partes review of claims 1–6 on all petitioned grounds, finding a reasonable likelihood that TikTok would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the evidence of record, we determine Petitioner has demonstrated a reasonable likelihood of prevailing in establishing unpatentability of at least one claim of the ’041 patent. Accordingly, we institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art at the time of the invention would have had “at least a [b]achelor’s degree in computer science, electrical engineering, computer engineering, or a related field, with 2–3 years of experience in digital video processing, or a related field, or equivalent research or professional experience.” Pet. 7 (citing Ex. 1003 ¶ 26). Patent Owner states that it applies Petitioner’s proposed level of ordinary skill for the purposes of its Preliminary Response. Prelim. Resp. 7.” slip op. at 6
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Resp. 34–35. First, Mr. Lett’s Declaration constitutes evidence cited to and relied on in the Petition. Thus, to the extent there is repetition, it is more reasonable to infer that the Petition repeats Mr. Lett’s testimony (not the other way around). Second, that a petition repeats the analysis of an expert declarant is not a reason, in and of itself, to give that expert’s opinion little to no weight. Rather, the critical inquiries are whether the declaration testimony “is conclusory and unsupported” and whether it “disclose[s] the underlying facts or data on which the opinion is based.” Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential) (quoting 37 C.F.R. § 42.65(a)). Additionally, a similar important inquiry is whether the declaration testimony supports the arguments made in the Petition. If these conditions are satisfied, we do not give little to no weight to declaration testimony simply because it is repeated in a petition, just as we do not give little to no weight to teachings of the prior art that are repeated in a petition. For the purposes of this Decision, we apply Petitioner’s level of” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“At this stage, we determine it is unnecessary to determine whether the challenged claims are limited as argued by Patent Owner because, as explained below, we determine Petitioner has shown that both Morikawa and Suzuki teach or reasonably suggest each limitation of the challenged independent claims even under Patent Owner’s proposed requirement of a variable output frame rate. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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)). To any extent that the parties disagree regarding this issue or the scope of the challenged claims, including whether prosecution history disclaimer applies and/or whether the claims are otherwise limited to variable output frame rates, the parties are encouraged to address such issues more directly in future briefing. We note for a statement made during prosecution to qualify as a disavowal of claim scope, the statement “must be ‘so clear as to show reasonable clarity and deliberateness,’ and ‘so unmistakable as to be unambiguous evidence of disclaimer.’” Genuine Enabling Tech. LLC v. Nintendo Co., 29 F.4th 1365, 1374 (Fed. Cir. 2022) (quoting Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1325 (Fed. Cir. 2003)). “The party seeking to invoke prosecution history disclaimer bears the burden of proving the existence of a clear and unmistakable disclaimer that would have been evident to one skilled in the art.” Id. (quoting Mass. Inst. of Tech. v. Shire Pharms., Inc., 839 F.3d 1111, 1119 (Fed. Cir. 2016)).” slip op. at 8
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,445,041 - PTAB · Mar 13, 2023 · IPR2022-01303 · APJ Bart A Gerstenblith · IPR · Institution
Instituted review of claims 2, 4–7, 9, 11–13, 45–48, 50, and 54–59 on all grounds; the Board found a reasonable likelihood that claim 54 was obvious over Gottschalk and Kramer.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“5. Weighing the Graham Factors “Once all relevant facts are found, the ultimate legal determination [of obviousness] involves the weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat, 876 F.3d at 1361. On balance, considering the record presently before us, which includes Petitioner’s strong showing regarding claim 54 and Patent Owner’s weaker evidence of nonobviousness, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that the combination of Gottschalk and Kramer would have rendered the subject matter of claim 54 of the ’068 patent obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 38
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Additionally, the Director recently clarified the Interim Procedure, stating that “[t]he Board should first assess Fintiv factors 1–5; if that analysis supports discretionary denial, the Board should engage the compelling merits question.” CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 6 (PTAB Feb. 27, 2023) (precedential). Here, we determine that, on balance, Fintiv factors 1–5 do not favor exercising our discretion to deny institution and, therefore, there is no need to determine whether the Petition establishes compelling merits. 7. Conclusion on Fintiv Factors Upon consideration of the Fintiv factors, we determine not to exercise our discretion to deny institution.” slip op. at 19
- Parallel petitionsDenied
“sufficiently address the challenged claims” of the ’068 patent. Notice 1. According to Petitioner, Gentex asserted a large number of claims in the parallel litigation “that are distinct from one another, that collectively comprise several thousand words of claim language.” Id. Petitioner ranks this Petition as “B” and the Petition in IPR2022-01302 as “A.” Id. at 1–2. Petitioner also explains its reasoning for the grouping of the claims challenged in each petition and that the only overlap between the two petitions is claim 1, from which a large number of claims depend. Id. at 2–3. Patent Owner did not file a response to the Notice. Nor did Patent Owner otherwise dispute Petitioner’s contentions that two petitions are necessary. See generally Prelim. Resp. On the present record, we see no reason to exercise our discretion to deny institution of either petition on the basis of Petitioner filing two petitions to address the large number of claims asserted in the related litigation. See PTAB Consolidated Trial Practice Guide, 59 (Nov. 2019)10 (recognizing that one circumstance in which more than one petition may be necessary is when a patent owner asserts a large number of claims in related litigation).” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in computer science, or an equivalent field, and three to five years of experience working with computer implemented tracking systems. Additional education might compensate for less experience and vice-versa.” Pet. 25 (citing Ex. 1005 ¶ 48). Patent Owner states that “[f]or purposes of responding to [Petitioner’s] Petition for [inter partes review], Patent Owner accepts [Petitioner’s] proposed person of ordinary skill in the art.” Prelim. Resp. 6. Patent Owner further states, “[h]owever, for any other purpose, Patent Owner disagrees with [Petitioner] at least that such [person of ordinary skill in the art] would be limited to a maximum of five years of experience.” Id. And, Patent Owner further “reserves the right to offer an alternative definition based on expert evidence in the event the Petition is instituted.” Id. At this stage of the proceeding and on the present record, we find that Petitioner’s uncontested level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’068 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt Petitioner’s level of ordinary skill in the art in our consideration of the issues presently before us.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 6,757,068
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.