- PTAB · Mar 23, 2023 · IPR2022-01402 · APJ Jason W Melvin · IPR · Institution
The Board instituted IPR on claims 1, 3, 4, 14, and 16–20, finding a reasonable likelihood of prevailing on obviousness over Geiwitz and, for claims 19–20, Geiwitz and Cardio Manual.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“which Patent Owner asserts the ’318 patent, but that litigation does not involve Petitioner. Ex. 2002 (infringement contentions from Rosen Technologies LLC v. Lennox International Inc., Case No. 3:22-cv-00732 (N.D. Tex.)). As Fintiv notes, the Board generally disfavors discretionary denial when litigation did not involve the petitioner, unless “the issues are the same as, or substantially similar to those already or about to be litigated, or other circumstances weigh against redoing the work of another tribunal.” Fintiv, IPR2020-00019, Paper 11, 13–14. We consider the Fintiv factors. Id. at 6.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityNot reached
“B. REAL PARTY IN INTEREST Patent Owner asserts that Petitioner fails to name Lennox and Ecobee, the litigation parties, as real parties in interest. Prelim. Resp. 26–27. Because no time bar would apply to either allegedly unnamed real party in interest (see Prelim. Reply 1), we decline to address Patent Owner’s assertions at this stage. See SharkNinja Operating, LLC v. iRobot Corp., IPR2020-00734, Paper 11, 18 (Oct. 6, 2020) (precedential).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. LEVEL OF SKILL IN THE ART Petitioner asserts skilled artisans “would have had at least a Bachelor’s degree in Electrical Engineering or a similar degree and at least two years of professional experience,” and would have been “familiar with the circuitry and operation of programmable, touchscreen thermostats having liquid crystal displays.” Pet. 7 (citing Ex. 1003 ¶ 48). Patent Owner does not dispute that definition, and offers that skilled artisans “would have had a bachelor’s degree in electrical engineering or a related field, and at least two years of experience in working with HVAC systems or thermostat systems.” Prelim. Resp. 5. We perceive no distinction between how the two definitions might affect our analysis. We adopt Petitioner’s definition, as it is supported by expert testimony.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“First, the claim language requires that the control program establish on the liquid crystal display both “a representation of a first virtual button” and “a first legend indicative of a first control function of said thermostat.” Ex. 1001, 13:28–39 (claim 1), 15:1–9 (claim 16), 16:18–26 (claim 19). The claims do not require that the legend is part of the button, or any other specific relationship between the legend and button. Thus, the claim language does not support the construction Patent Owner seeks. Second, the Summary of the Invention states that “an image representative of a first virtual button may be shown on the touch screen display with graphics (alphanumeric characters and/or icons) on or closely associated with the first virtual button.” Id. at 3:53–56. By using a disjunctive, “or,” the Specification establishes that the legend (e.g., 4 Although Patent Owner seeks construction of “a first legend indicative of a first control function,” its proposed construction only addresses “legend,” while maintaining the other claim language. Prelim. Resp. 5–9. We address “legend” in the context of the other claim language and therefore need not address the full phrase. alphanumeric characters) need not be located on the button to which it corresponds. Accordingly, we decline to adopt Patent Owner’s asserted construction at this stage. No other aspect of the challenged claims requires construction for purposes of institution. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 7,156,318 - PTAB · Jan 9, 2023 · IPR2022-01142 · APJ Ryan H Flax · IPR · Institution
Instituted IPR of claims 1–14 on all asserted grounds: anticipation by or obviousness over Roy or Chang, and obviousness over Simonoff and Naef.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute trial in an inter partes review. We may institute an inter partes review if the information presented in the petition filed under 35 U.S.C. § 311, and any preliminary response filed under § 313, shows that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314. After reviewing the parties’ submissions, we conclude Petitioner demonstrates a reasonable likelihood it would prevail in showing that claims of the ’124 patent are unpatentable under the presented grounds. Therefore, we institute inter partes review of all challenged claims (1–14) under the grounds raised in the Petition, pursuant to 35 U.S.C. § 314. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 7 (citing Ex. 1003 ¶¶ 28–30).9 Patent Owner states that it “adopt[s] Petitioner’s proposed level of ordinary skill in the art because it comports with the technology and claims of the ’124 Patent as well as the asserted prior art.” Prelim. Resp. 5. Patent Owner adds that “[t]he expert witnesses of the parties are persons of (at least) ordinary skill in the art of the ’124 Patent and its claims.” Id. We accept Petitioner’s proposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’124 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[]” evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). B.” slip op. at 17
- Expert testimonyPetitioner expert creditedOther
“In re Merck for this point). And, further, when considering obviousness, the prior art must be considered for all of its teachings, including unpreferred embodiments. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). With this precedent in mind, we restate that Simonoff’s disclosure appears to fully include Naef’s disclosure. Ex. 1006, 3:24–29. Further, both references apparently identify the existence and general functionality of central-server systems for remote computer collaboration where the server is in charge of updating all networked computers’ displays, even if Naef’s disclosed invention is not such a system, but instead puts a client computer in control. See generally Ex. 1006; Ex. 1007. Finally, Petitioner’s witness, Dr. Terveen, testifies that the person of ordinary skill in the art would have had good reason to “improve Simonoff’s similar collaboration system” by having its server return update/annotation messages back to the source client along with the other clients during its “multi-casting,” as suggested by Naef, because this would “avoid[] conflicts between user inputs and [would] allow[] the source client to see the edits as the other clients would see them. Ex. 1003 ¶73 (citing Ex. 1015, 12:56–67; Ex. 1008, 45; Ex. 1006, 24:22–27). At this stage of the proceedings, we credit Dr. Terveen’s testimony and find Petitioner’s position reasonable. We are not persuaded by Patent Owner’s arguments or evidence at this stage (we are not entirely sure what qualifies Mr. Sunatori’s as a reliable witness at this point) so as to dissuade us from instituting trial on this ground.” slip op. at 52
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Owner’s positions on claim construction, both identifying that claim construction is unnecessary and then proposing the above-indicated claim construction. Prelim. Reply 1. Petitioner argues that neither the disputed claim language itself nor the Specification supports Patent Owner’s proposed claim construction because the claims simply state “that the output message includes information defining the content to be shared, not the input message itself or a copy of it.” Id. Petitioner cites two portions of the ’124 patent’s written description that contradict Patent Owner’s narrow definition of the claim language––the first indicating that input messages and output messages may be in different formats and have different data and that the output messages can be generated once the input messages are read (Ex. 1001, 14:27–33), and the second indicating that the output messages could combine multiple input messages, and that output messages represent input messages that themselves represent computer input such as a mouse drag (id.at 33:1–9). We agree with Petitioner that the record does not support narrowing the meaning of the disputed claim language as argued by Patent Owner and, based on the present record, we do not expressly construe this claim language.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,963,124 - PTAB · Jan 4, 2023 · IPR2022-01166 · APJ Benjamin D M Wood · IPR · Institution
The Board instituted inter partes review of claims 1–16 on all asserted grounds, finding a reasonable likelihood that Weather Shield would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . 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 considering the Petition, we determine that Petitioner has shown a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we grant the Petition for inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner asserts that one of ordinary skill in the art at the time of the invention “would have had a Bachelor’s degree in mechanical engineering or a similar field, and 1–2 years of experience in the design, development, testing or manufacture of windows,” but “[a]dditional educational background could substitute for professional experience and vice versa.” Pet. 9–10 (citing Ex. 1002 ¶¶ 11–16). Patent Owner does not address this assertion or provide its own definition of the level of ordinary skill. We discern no reason, at this stage of the proceeding, to question Petitioner’s proposed level of ordinary skill, which is supported by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[n]o claim term requires construction, because the prior art meets the claims terms under any reasonable interpretation.” Pet. 9. Patent Owner does not address whether any claim term requires construction. At this stage of the proceeding, we do not perceive the need to expressly construe any claim term, as the threshold question of institution can be decided without doing so. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (approving Board decision not to construe claim language where the construction is not material to the dispute).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“On the current record, we are not persuaded that this statement in Varlonga teaches away from the combination of Varlonga and Erikanders. Patent Owner’s argument implies that the proposed combination would replace Varlonga’s metal frame with a wooden frame. This is incorrect. In the proposed combination, one of ordinary skill in the art would have added Erikander’s wood cladding to Varlonga’s metal frame, not replaced the frame with the cladding. See Pet. 12 (because “some consumers preferred the aesthetic appearance of wood,” it “would have been obvious to a POSA to add [Erikanders’] wood cladding to Varlonga.”) We also determine, on this record, that Petitioner’s proposed reason to combine the prior art, including Varlonga and Erikanders, has a rational underpinning. See 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.”). Erikanders teaches, for example, that the surface of a metal window frame may not be “aesthetically attractive” and “may feel unpleasantly cold,” and goes on to discuss a prior-art reference that adds wood lining to both sides of the metal frame. Ex. 1006, 1:10–21. This reasonably suggests that Erikander’s wood lining, which is attached to the inner side of a metal-frame window, is intended to address the noted aesthetic and tactile deficiencies of a metal-frame window with an exposed metal surface.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,107,027 - PTAB · Nov 29, 2022 · IPR2022-00864 · APJ Eric C Jeschke · IPR · Institution
The Board instituted IPR on claims 1–5, 7–36, 40, and 41 on all asserted §103 grounds, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“1. whether the same petitioner previously filed a petition directed to the same claims of the same patent; 2. whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it; 3. whether at the time of filing of the second petition the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition; 4. the length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition; 5. whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent; 6. the finite resources of the Board; and 7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review. Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 15–16 (PTAB Sept. 6, 2017) (precedential). The General Plastic factors are not dispositive, but part of a balanced assessment of the relevant circumstances in a proceeding, including the merits. Consolidated Trial Practice Guide 58 (Nov. 2019), https://www.uspto.gov/TrialPracticeGuide Consolidated (“TPG”).” slip op. at 10
- Strike new argumentNew argument consideredOther
“Arguments and information that are not presented and developed in the Petition, but instead are incorporated by reference, are not entitled to consideration, as it is improper to incorporate by reference arguments from one document into another document. See 37 C.F.R. § 42.6(a)(3); Cisco Sys., Inc. v. C-Cation Techs., LLC, IPR2014-00454, Paper 12 at 7–10 (PTAB August 29, 2014) (informative) (discussing incorporation by reference). We note that Patent Owner does not argue that Petitioner has failed to adequately present a reason to combine Zupancich and Bosher in that asserted ground absent the allegedly improperly incorporated discussions in paragraph 413 of the Jobin Declaration. At this stage of the proceeding, we do not view as improper Petitioner’s reliance on that paragraph of the Jobin Declaration as part of its reason to combine analysis. 4. Conclusion For these reasons, these arguments by Patent Owner do not present any bases to deny the Petition in this proceeding.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends, with accompanying declaration testimony, that a person having ordinary skill in the art would have “had at least a Bachelor’s degree in mechanical or structural engineering, or related fields, and two years’ experience designing structures with comparable mechanical and/or structural elements to the ’855 Patent’s subject matter.” Pet. 10 (citing Jobin Decl. ¶¶ 23–26). Petitioner also states that “[a]dditional experience may compensate for less education.” Id. (citing Jobin Decl. ¶¶ 23–26). Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the record at this stage of the proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 26
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this stage of the proceeding and based on the current record, we need not construe explicitly any of the claim language discussed in this section or any other claim terms because doing so would not change the outcome of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent 15 “VIPs” refers to vacuum insulated panels. necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).16” slip op. at 27
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,263,855 - PTAB · Oct 18, 2022 · IPR2022-00878 · APJ Lynne H Browne · IPR · Institution
The Board instituted IPR on claims 55–72, 78–80, and 83–85 on all eight asserted grounds after finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art would have been a mechanical engineer, medical device engineer, or an interventional cardiologist with a working knowledge of stent-based prostheses for use in a patient’s heart or vasculature to replace and/or repair a diseased valve, intravascular delivery systems for the delivery of such prostheses, and methods associated with the delivery and implantation of such prostheses in a patient. Pet. 31 (citing Ex. 1026 ¶ 27). Patent Owner “does not dispute Petitioners’ definition of a person of ordinary skill in the art.” Prelim. Resp. 3 (citing Pet. 31). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“On the record before us, we agree with Patent Owner that the term “folds” need not be construed at this time. We further agree with both parties that many claim terms are defined by the ’400 patent and these definitions control. Pet. 26; Prelim. Resp. 16. The meaning of the claim term “substantially conical” is central to our analysis of Grounds 5–8. Accordingly, we reproduce the definition of this term from the Specification of the ’400 patent below:” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“folds” need not be construed at this time. We further agree with both parties that many claim terms are defined by the ’400 patent and these definitions control. Pet. 26; Prelim. Resp. 16. The meaning of the claim term “substantially conical” is central to our analysis of Grounds 5–8. Accordingly, we reproduce the definition of this term from the Specification of the ’400 patent below: resembling a cone or a portion thereof at some point in the practical use of the structure with the specific property that the transverse (that is, on a plane of section generally perpendicular to the axis of flow of the valve) cross-sectional perimeter or area of said structure in the operationally closed position decreases monotonically moving from the level of the leaflet apposition to the proximal end of the valve. Ex. 1001, 12:47–54. We agree with Patent Owner and Petitioner that this definition of “substantially conical” applies to the claims at issue in this proceeding. issue in this proceeding for at least some of the challenges presented by Petitioner as will be discussed in Sections II.D–II.H below. As, however, construction of this claim term is not required for our institution decision, we invite the parties to brief this issue in their respective responses to this decision. slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“however, the references relied are the same or substantially the same as art presented to the Office. Prelim. Resp. 75.8 We thus determine under the first part of the Advanced Bionics framework that these references were previously presented to the Office. Accordingly, we proceed to the second part of the Advanced Bionics framework and consider whether Petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. See Advanced Bionics, Paper 6 at 10 (“[I]f the record of the Office’s previous consideration of the art is not well developed or silent, then a petitioner may show the Office erred by overlooking something”). In Grounds 1–4, Petitioner explains how references meet the limitations of the claims at issue. Pet. 31–75. For the reasons discussed in Section II.D–II.G below, we find that Petitioner demonstrates that the Examiner erred by overlooking the specific teachings in the relevant prior art such that the error by the Office was material to the patentability of the challenged claims. See Advanced Bionics, Paper 6 at 21. Thus, with respect to Grounds 1–4, on this record, we determine that the totality of the evidence favors declining to exercise our discretion under § 325(d) to deny institution.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 9,737,400 - PTAB · Oct 4, 2022 · IPR2022-00851 · APJ Eric C Jeschke · IPR · Institution
The Board instituted IPR on claims 1–19, 39, and 40 on all asserted § 103 grounds, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“the claims challenged in this proceeding and in the ’293 IPR. Of the nine claims challenged in the ’293 IPR, seven are also challenged in this proceeding. Based on the overlap in the claims challenged in the ’293 IPR and this proceeding, the first factor weighs in favor of exercising our discretion to deny institution.” slip op. at 13
- BurdenInstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). 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. Upon consideration of the evidence and arguments in the record, for the reasons below, 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 thus institute inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends, with accompanying declaration testimony, that a person having ordinary skill in the art “would have at least a Bachelor’s degree in mechanical or structural engineering, or related fields, and two years’ experience designing structures with comparable mechanical and/or structural elements to the ’511 Patent’s subject matter.” Pet. 10 (citing Jobin Decl. ¶¶ 23–26). Petitioner also states that “[a]dditional experience may compensate for less education.” Id. (citing Jobin Decl. ¶¶ 23–26). Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the record at this stage of the proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 25
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“At this stage of the proceeding and based on the current record, we need not construe explicitly any of the claim language discussed in this section or any other claim terms because doing so would not change the outcome of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we 14 “VIPs” refers to vacuum insulated panels. 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))).15” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,913,511 - PTAB · Sep 13, 2022 · IPR2022-00620 · APJ Frances L Ippolito · IPR · Institution
The Board instituted IPR of claim 8 on all five asserted §103 grounds, finding a reasonable likelihood that at least one ground would establish unpatentability.
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 1 This is the same reference as listed in Section I.D. below. 2 This is the same reference as listed in Section I.D. below. the arguments presented in the parties’ briefs, we conclude that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail in challenging claim 8 of the ’413 patent as unpatentable under the grounds presented in the Petition. Pursuant to § 314, we hereby institute an inter partes review.” slip op. at 2
- BurdenInstitutedInstituted
“F. Obviousness based Sprague ’905 and Trainor – Claim 8 Petitioner asserts that claim 8 would have been obvious based on the teachings of Sprague ’905 and Trainor. Pet. 28–44. Patent Owner opposes. Prelim. Resp. 3–17. Having considered the arguments and evidence before us, we find that the record establishes a reasonable likelihood that Petitioner would prevail on this asserted ground of obviousness based on Sprague ’905 and Trainor for claim 8.” slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art In determining the level of skill in the art, we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner contends that a POSITA at the time of the invention of the ’413 patent “would have had a bachelor’s degree in mechanical engineering or an equivalent field, plus at least two years of experience working in the field of mechanical design and product testing.” Pet. 8 (citing Ex. 1007 ¶¶ 34–36). Patent Owner does not dispute this level of skill. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
- Adverse judgmentDecided for petitioner
“With respect to a petition for an inter partes review, our reviewing court has determined that the doctrine of assignor estoppel does not bar an assignor from filing a petition. Arista Networks, Inc. v. Cisco Sys., Inc., 908 Board. The holding was based on 35 U.S.C. § 311(a), which provides “a person who is not the owner of a patent may file with the Office a petition to institute an inter partes review of the patent” (emphasis added), which the Federal Circuit concluded “unambiguously leaves no room for assignor estoppel in the IPR context.” Arista, 908 F.3d at 801–04. The Board has followed this precedent and issued its own precedential decision holding: Under the AIA, “a person who is not the owner of a patent may file with the Office a petition to institute an inter partes review of the patent.” 35 U.S.C. § 311(a) (emphasis added). Consequently, under the statute, an assignor of a patent, who is no longer an owner of the patent at the time of filing, may file a petition requesting inter partes review. This statute presents a clear expression of Congress’s broad grant of the ability to challenge the patentability of patents through inter partes review. Athena Automation Ltd. v. Husky Injection Molding Sys. Ltd., IPR2013- 00290, Paper 18 at 12–13 (PTAB Oct. 25, 2013) (precedential). We have, additionally, reviewed the Supreme Court decision in Minerva Surgical, Inc. v. Hologic, Inc., 141 S. Ct. 2298 (2021). There, the Supreme Court “clarif[ied] that [assignor estoppel] reaches only so far as the equitable principle long understood to lie at its core”; that is, the assignor is estopped from raising patent invalidity as a defense “when, but only when, the assignor’s claim of invalidity contradicts explicit or implicit representations he made in assigning the patent.” Id. at 2302. Moreover, the Court determined that “[a]ssignor estoppel applies when an invalidity defense in an infringement suit conflicts with an explicit or implicit representation made in assigning patent rights. But absent that kind of assignor estoppel has no place.” Id. at 2311 (emphasis added). We note that Minerva involved a district court infringement suit; not an inter partes review. Further, we discern nothing in the Supreme Court decision that clearly overrules the holding in Arista identified above. For example, the Supreme Court did not address the language of 35 U.S.C. § 311(a). Therefore, based on the present record, Patent Owner has not presented persuasive arguments that we should decline to follow binding, precedential decisions. Accordingly, on this record and for this preliminary decision, we decline to apply assignor estoppel to deny this Petition.” slip op. at 8
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,074,413 - PTAB · Jun 8, 2022 · IPR2022-00293 · APJ Eric C Jeschke · IPR · Institution
The Board instituted IPR on claims 1, 2, 7–11, 30, and 31 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The Board uses a twopart framework in determining whether to exercise its discretion under § 325(d): (1) determining whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. See Advanced Bionics, LLC v. Med- El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB 9 US 2004/0226309 A1, published November 18, 2004 (Ex. 1012, “Broussard”). Feb. 13, 2020) (precedential). In applying this framework, we consider several non-exclusive factors, including: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5, first paragraph). If, after review of factors (a), (b), and (d), we determine that the same or substantially the same art or arguments previously were presented to the Office, then factors (c), (e), and (f) relate to whether the petitioner demonstrates that the Office erred in a manner material to the patentability of the challenged claims. Advanced Bionics, Paper 6 at 10.” slip op. at 9
- 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) (“The Board institutes the trial on behalf of the Director.”). 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. Upon consideration of the evidence and arguments in the record, for the reasons below, 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 thus institute inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends, with accompanying declaration testimony, that a person having ordinary skill in the art “would have at least a Bachelor’s degree in mechanical engineering, structural engineering, or a related field, and two years of experience designing structures with comparable mechanical and/or structural elements to the subject matter of the ’511 Patent.” Pet. 12 (citing Jobin Decl. ¶¶ 22–25). Petitioner also states that “[a]dditional experience may compensate for less education.” Id. (citing Jobin Decl. ¶¶ 22–25). Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the record at this stage of the proceeding, including the prior art. See Prelim. Resp. 10; GPAC Inc., 57 F.3d at 1579. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction In inter partes reviews, the Board interprets claim language using the same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19. Neither Petitioner nor Patent Owner proposes express constructions for any claim terms. See Pet. 11. At this stage of the proceeding and based on the current record, we do not discern a need to construe explicitly any claim terms because doing so would not change the outcome of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,913,511 - PTAB · Jun 8, 2022 · IPR2022-00292 · APJ Eric C Jeschke · IPR · Institution
The Board instituted IPR on claims 19–21, 23, 26–31, 33, 35–37, and 41 on all asserted grounds because the Petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“The mere fact that the additional prior art references relied on by Petitioner (i.e., Ekerot, Kuhn, Loeffler, and Sinclair) pertain to one or more of the same fields to which the art cited in prosecution also pertains is not sufficient alone to satisfy the first part of the Advanced Bionics framework by showing that these additional references are “substantially the same” as art previously presented to the Office. See Prelim. Resp. 45–46. Indeed, the prior art cited in petitions for inter partes review and the art cited during prosecution of the challenged patent will likely always relate to the same subject matter as that in the claims at issue. On these facts, we conclude that Petitioner bases at least the first three asserted grounds (Kuhn; Loeffler and Kuhn; Sinclair and Kuhn) on prior art and arguments that are not the same or substantially the same as the prior art or arguments before the Examiner. When considering the Petition as a whole, we find that it does not sufficiently implicate the concerns addressed by § 325(d) to warrant discretionary denial. Because the first part of the framework in Advanced Bionics is not met, we need not reach “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics, Paper 6 at 8–9.” slip op. at 12
- 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) (“The Board institutes the trial on behalf of the Director.”). 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. Upon consideration of the evidence and arguments in the record, for the reasons below, 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 thus institute inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends, with accompanying declaration testimony, that a person having ordinary skill in the art “would have at least a Bachelor’s degree in mechanical or structural engineering, or a related field, and two years of experience designing structures with comparable mechanical and/or structural elements to the subject matter of the ’855 Patent.” Pet. 10 (citing Jobin Decl. ¶¶ 22–25). Petitioner also states that “[a]dditional experience may compensate for less education.” Id. (citing Jobin Decl. ¶¶ 22–25). Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the record at this stage of the proceeding, including the prior art. See Prelim. Resp. 10; GPAC Inc., 57 F.3d at 1579. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19. Neither Petitioner nor Patent Owner proposes express constructions for any claim terms. See Pet. 8. At this stage of the proceeding and based on the current record, we do not discern a need to construe explicitly any claim terms because doing so would not change the outcome of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,263,855 - Medtronic Corevalve LLC / Edwards Lifesciences Corporation et al. v. Colibri Heart Valve LLCAll claims unpatentablePTAB · Mar 24, 2022 · IPR2021-00775 · APJ James A Tartal · IPR · Final written decision
Claims 1–5 are unpatentable as obvious over Garrison; the Board did not reach the Andersen/Limon grounds.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“pursuant to 35 U.S.C. §§ 311–319, requesting an inter partes review of the Challenged Claims. Paper 2 (“Pet.”). On March 10, 2021, we instituted an inter partes review of the Challenged Claims on all grounds of unpatentability asserted in the Petition. Paper 11. Within one month of institution of review, on April 6, 2021, Edwards Lifesciences Corporation and Edwards Lifesciences LLC filed a petition in IPR2021-00775 substantively identical to the Petition in this proceeding, along with a motion for joinder to this proceeding. IPR2021-00775, Papers 2 and 3. We instituted trial in IPR2021-00775 and granted the motion joining Edwards Lifesciences Corporation and Edwards Lifesciences LLC as petitioner to this proceeding. Paper 17.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“pursuant to 35 U.S.C. §§ 311–319, requesting an inter partes review of the Challenged Claims. Paper 2 (“Pet.”). On March 10, 2021, we instituted an inter partes review of the Challenged Claims on all grounds of unpatentability asserted in the Petition. Paper 11. Within one month of institution of review, on April 6, 2021, Edwards Lifesciences Corporation and Edwards Lifesciences LLC filed a petition in IPR2021-00775 substantively identical to the Petition in this proceeding, along with a motion for joinder to this proceeding. IPR2021-00775, Papers 2 and 3. We instituted trial in IPR2021-00775 and granted the motion joining Edwards Lifesciences Corporation and Edwards Lifesciences LLC as petitioner to this proceeding. Paper 17.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“with the features recited in claim 1, aside from the use of pericardial tissue. See generally Resp. Patent Owner also does not dispute that the use of fixed pericardial tissue in the construction of a valve means was well known in the art to a person of ordinary skill.9 Id. Because Petitioner’s arguments are supported by the cited evidence of record, which we adopt as our own findings, we are persuaded that a preponderance of the evidence shows that” slip op. at 41
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentable
“with the features recited in claim 1, aside from the use of pericardial tissue. See generally Resp. Patent Owner also does not dispute that the use of fixed pericardial tissue in the construction of a valve means was well known in the art to a person of ordinary skill.9 Id. Because Petitioner’s arguments are supported by the cited evidence of record, which we adopt as our own findings, we are persuaded that a preponderance of the evidence shows that” slip op. at 41
Patent outcomesUS 9,125,739 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,125,739
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.