• Saudi Arabian Oil Company v. SK Innovation Co., Ltd.All claims unpatentable
  PTAB · May 9, 2019 · IPR2018-00159 · APJ Monté T Squire · IPR · Final written decision

  Claim 2 was held unpatentable as anticipated by Novomer 1; the contingent motion to amend was granted, substituting claim 5.

  RulingsFinal written decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we granted Petitioner’s request and instituted an inter partes review for challenged claim 2. Paper 9 (“Institution Dec.”).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner agrees with Petitioner’s assessment regarding the level of ordinary skill in the art. Mot. Amend 7. We determine the level of ordinary skill proposed by Petitioner is consistent with the ’979 patent and the asserted prior art, and we adopt that level in construing and deciding the patentability of claim 2.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “In the Institution Decision, we determined that the phrase “A poly(alkylene carbonate) represented by Formula 10” did not require construction at that stage. Institution Dec. 9; see also id. at 7 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only terms which are in controversy need be construed and only to the extent necessary to resolve the controversy)). Neither party has argued post-institution that this phrase of claim 2 needs be construed. See PO Resp. 2; Pet. Reply 1–3. We conclude that no further construction of this phrase is necessary.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “In the Institution Decision, we agreed with Petitioner that the variable construction of the phrase “each independently” is the broadest reasonable interpretation in light of the specification, and construed the phrase to mean that “each variable R81, R82, R83, and R84 is independent from one instance to another throughout the polymer.” Institution Dec. 13–14. Based on that construction, we also determined in the Institution Decision that claim 2 encompasses the following genera: (1) “Genus A,” which includes a poly(ethylene glycol) chain transfer agent flanked by poly(ethylene carbonate) chains (Pet. 24); (2) “Genus B,” which includes a poly(propylene glycol) chain transfer agent flanked by poly(propylene carbonate) chains (id. at 25–26); (3) “Genus C,” which includes a poly(propylene glycol) chain transfer agent flanked by poly(ethylene carbonate) chains (id. at 26); and (4) “Genus D,” which includes a poly(ethylene glycol) chain transfer agent flanked by poly(propylene carbonate) chains (id. at 27). Institution Dec. 12–13. Neither party opposes adopting the variable construction of the phrase “each independently” and the determination that, under the variable construction, claim 2 encompasses Genus A, Genus B, Genus C, and Genus D. PO Resp. 2; Pet. Reply 1–3. We maintain the variable construction of the phrase “each independently” on the complete record.” slip op. at 11

  Patent outcomesUS 9,023,979 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,023,979
• Renesas Electronics Corporation / Renesas Electronics America, Inc. v. Lone Star Silicon Innovations, LLCSome claims unpatentable
  PTAB · Mar 25, 2019 · IPR2017-01869 · APJ Elizabeth M Roesel · IPR · Final written decision

  Claims 1, 4–6, 9, and 10 are unpatentable as obvious over Igarashi and Tanaka (1999); claims 2 and 7 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “For purposes of our Institution Decision, we accepted the definition of a POSA provided by Dr. Bottoms. Dec. 10–11 (citing Ex. 2001 ¶ 31). Dr. Bottoms provides a “clarification” of the Board’s description, testifying that “[t]he specific industry experience would require process design experience—which is experience beyond managing fabrication equipment.” Ex. 2011 ¶ 36. Dr. Bottoms’ clarification is consistent with the level of skill reflected by the ’330 patent, which discloses process design options for making a low dielectric constant silicon nitride etch stop. Ex. 1001, 5:66-6:24. Dr. Neikirk testifies that, under Dr. Bottoms’ definition, a POSA has a higher degree of skill than under Dr. Neikirk’s definition, and the Board’s adoption of Dr. Bottoms’ definition would not change his opinions regarding obviousness. Ex. 1028 ¶ 14. We find there is little difference between the declarants’ definitions of a POSA, and the outcome of our patentability determinations would be the same, regardless of which definition we accept. For the sake of clarity, we adopt Dr. Bottoms’ definition of a POSA, including the recent clarification. Ex. 2011 ¶¶ 35, 36. We also rely on the cited prior art references as reflecting the level of ordinary skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedOther

    “After reviewing the qualifications of Dr. Neikirk and Dr. Bottoms, as set forth in each witness’s declaration and curriculum vitae, we find that each of these declarants has sufficient education and experience related to the subject matter of the ’330 patent to testify regarding the perspective of a POSA at the time of the invention. Ex. 1011 ¶¶ 2, 3; Ex. 1012; Ex. 2002; Ex. 2011 ¶¶ 8–20. See Trial Practice Guide Update, 83 Fed. Reg. 39,989 (Aug. 13, 2018), available at https://go.usa.gov/xU7GP (“TPG Update”), 3 (“A person may not need to be a person of ordinary skill in the art in order to testify as an expert under Rule 702, but rather must be ‘qualified in the pertinent art.’” (quoting Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008))). D.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “In the Institution Decision, we determined that it was not necessary to resolve the parties’ claim construction dispute. Dec. 9–10. Neither party challenges that determination. Petitioner contends that the asserted grounds of unpatentability apply under either party’s construction for the phrase “etch stop layer of silicon nitride.” Pet. 25 n.3. Patent Owner argues that this phrase is not limited to a layer of pure silicon nitride and allows for the presence of dopants and/or impurities. PO Resp. 8–10. Patent Owner does not, however, rely on its proposed claim construction for any patentability argument. In fact, Patent Owner acknowledges that the silicon nitride materials disclosed in the Low-K References satisfy Patent Owner’s proposed construction. PO Resp. 10. Under these circumstances, we agree with Petitioner that we do not need to resolve the parties’ claim construction dispute. Pet. Reply 2. Accordingly, consistent with the Institution Decision, we determine that we do not need to provide an express construction for any claim term for purposes of resolving the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). B.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “copper interconnects need silicon nitride films as an etch stop, but that such films have a high dielectric constant, which causes an undesirable increase in the effective dielectric constant of the interconnect structure and increased parasitic capacitance, as compared with aluminum interconnects. Ex. 1021, 829-1, 829-2; see Pet. 18; Ex. 1011 ¶¶ 92, 93. As Petitioner correctly points out (Pet. 53–54), Tanaka (1999) cites Igarashi as an example of a copper interconnect system that is degraded by parasitic capacitance due to the high permittivity (dielectric constant) of silicon nitride etch stop films. Ex. 1017, 47-1 n.1. Tanaka (1999) discloses a low dielectric constant silicon nitride etch stop film as a solution to the problem of parasitic capacitance in copper damascene interconnect structures, such as Igarashi’s. Id. at 47-1, 47-2 (“New low-k SiN film, with a permittivity of 5.4 . . . should be the solution to realize Cu damascene interconnects . . . .”). Consistent with these express disclosures, Dr. Neikirk persuasively testifies that “Igarashi identifies a need for a low-k dielectric etch stop layer” and “Tanaka (1999) meets this need.” Ex. 1011 ¶ 94; see Pet. 18 (citing Ex. 1011, § VIII.C., which contains paragraph 94 of Dr. Neikirk’s testimony). Accordingly, we find Petitioner has shown by a preponderance of the evidence that a POSA would have been motivated to use the low dielectric constant silicon nitride etch stop film of Tanaka (1999) as the etch stop layer in the interconnect system of Igarashi. Patent Owner disputes whether Petitioner has established a reasonable expectation of success for the combination of Tanaka (1999)’s low dielectric constant silicon nitride etch stop film and Igarashi’s interconnect structure. PO Resp. 65. Although the Petition does not expressly discuss whether one of ordinary skill in the art would have had a reasonable expectation of success in combining Tanaka and Igarashi to arrive at the claimed invention, Petitioner shows a very close relationship between the teachings of Tanaka (1999) and Igarashi. Pet. 12–13, 17–18, 53–62. As discussed above and argued by Petitioner, Tanaka (1999): (1) cites Igarashi as an example of a copper interconnect system that suffers from parasitic capacitance due to the high dielectric constant of silicon nitride etch stop films, and (2) discloses a low dielectric constant silicon nitride etch stop film as a solution to the parasitic capacitance problem exemplified by Igarashi. Pet. 13, 18, 53–54; Ex. 1011 ¶¶ 74–79, 88–94; Ex. 1017, 47-1 & n.1; Ex. 1021, 829-1, 829-2. Petitioner establishes a reasonable expectation of success for the combination of Tanaka (1999) and Igarashi by demonstrating a strong correlation between the problem discussed by Igarashi—the high dielectric constant of silicon nitride films when used as etch stops for copper interconnects—and the solution disclosed by Tanaka (1999)—a low dielectric constant silicon nitride film for use as an etch stop layer in copper damascene interconnect structures. In re Inland Steel Co., 265 F.3d 1354, 1364 (Fed. Cir. 2001) (“[T]he strength of the correlation between the references gives rise to a reasonable expectation of success from combining them.”).” slip op. at 27

  Patent outcomesUS 6,388,330 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,388,330
• Fujifilm Corporation v. Sony CorporationSome claims unpatentable
  PTAB · Nov 7, 2018 · IPR2017-01268 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  Claims 15 and 17 are unpatentable as anticipated by Ishikawa; the petitioner did not show claims 1–11, 16, and 18–20 unpatentable over Aonuma or Aonuma and Abe.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(“POSITA”) at the time of the ’774 patent would have had “a bachelor’s degree in materials science, electrical engineering, mechanical engineering, chemistry, or a closely related field, and at least five years of experience” in industry or academic research relating to magnetic tape, or “a master’s degree or higher” in the same fields and at least three years of experience relating to magnetic tape. Pet. 13 (citing Ex. 1003 ¶ 65; Ex. 1018 ¶ 60). Patent Owner does not dispute Petitioner’s assessment in its Response, and Dr. Talke agrees that it “is reasonable.” Ex. 2026 ¶¶ 25–26. Petitioner’s assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985))). Accordingly, we adopt Petitioner’s assessment of the level of ordinary skill in the art.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “the broadest reasonable construction, claim terms are presumed to have their ordinary and customary meaning as understood by a person of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“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)). For the purposes of the Decision on Institution, we determined that, based on the record at that time, no claim term required express construction (Dec. on Inst. 7), and we see no reason to modify that determination in light of the record developed during trial. C.” slip op. at 9

  • Expert testimonyPetitioner expert creditedMixed

    “considerably greater than Ishikawa’s stylus load of 50–300 μN (Ex. 1015 ¶ 45). The Talke Declaration does not address this discrepancy, and Dr. Talke stated during his deposition that reducing the stylus load would reduce scratching of the magnetic tape surface. Ex. 1030, 108:14–19 (“Q: Would reducing the contact pressure for the stylus instrument reduce the scratching of the magnetic tape surface by the stylus? A: Yes, it would, but you have to remember the other problem is the diameter and size of the stylus.”). Moreover, Petitioner provides evidence that it was not uncommon to use stylus-type profilometers to measure the properties of magnetic tape, even after Bhushan was published in 1996. See Reply 6. In particular, Petitioner points to Saliba,6 which describes using a stylus-type profilometer, under identical conditions to those used in Ishikawa, to measure the surface characteristics (including peak-to-valley roughness) of the backcoating of magnetic tape. Ex. 1027, 7:28–40, 57–60. Petitioner further points to Ohno,7 which also describes using “a stylus type 3D profilometer in accordance with JIS B0601” to measure the surface roughness characteristics of magnetic tape. Ex. 1028 ¶ 36; see also Ex. 1015 ¶ 45 (Ishikawa explaining that surface roughness characteristics were measured “in accordance with JIS-B0601-1994”); Ex. 1027, 7:28–39 (Saliba explaining that surface roughness characteristics where measured “in accordance with JIS-B0601-1994”). Accordingly, we are persuaded that the 6 US Patent No. 6,558,774 B1, issued May 6, 2003 (Ex. 1027). 7 U.S. Patent App. Pub. No. US 2005/0175866 A1, published Aug. 11, 2005 (Ex. 1028). evidence establishes that a stylus-type profilometer is a suitable device for measuring the surface characteristics of magnetic tape.” slip op. at 19

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We agree with Petitioner that Ishikawa teaches “peak-to-valley roughness less than about 325 nm” as recited in claim 15. Pet. 24–25; Reply 5–8; Ex. 1003 ¶ 216. In particular, Ishikawa teaches a backcoating layer of a magnetic tape that has a peak-to-valley roughness “Rz of 40 to 250 nm, particularly 50 to 200 nm.” Ex. 1015 ¶ 44. Ishikawa provides five example embodiments of its magnetic tape, and reports the measurements of a number of characteristics of the backcoat layer for each example, including peak-to-valley roughness Rz. Id. ¶¶ 120–134, Table 1. Ishikawa discloses that peak-to-valley roughness Rz was measured using a stylus-type profilometer under the following conditions: Stylus: diameter: 1.5 to 2.5 μm; curvature: 60º Contact pressure: 50 to 300 μN Cut-off length: 80 μm Sampling length: 80 μm Assessment length: 400 μm Id. ¶¶ 45, 49. The reported peak-to-valley roughness Rz values for the five examples ranged from 58 to 87 nm, as shown in the annotated portion of Ishikawa Table 1 from the Petition, reproduced below: Pet. 24 (citing Ex. 1015, Table 1). The annotated portion of Ishikawa Table 1 shows the results for the measured characteristics of the backcoat layer of Examples 1–5, with the peak-to-valley roughness Rz values highlighted by a red box. Id. Because Ishikawa teaches that the backcoating layer of its magnetic tape should have a peak-to-valley roughness “Rz of 40 to 250 nm, particularly 50 to 200 nm,” and because Ishikawa presents examples of magnetic tape with backside surfaces having a peak-to-valley roughness of 87 nm or less, Ishikawa discloses “a peak-to-valley roughness less than about 325 nm” as recited in claim 15.” slip op. at 16

  Patent outcomesUS 7,029,774 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,029,774
• Dexcom, Inc. v. Waveform Technologies, Inc.Some claims unpatentable
  PTAB · Sep 12, 2018 · IPR2017-01051 · APJ Elizabeth M Roesel · IPR · Final written decision

  Claims 1, 4–12, and 15–19 were held unpatentable as obvious over Hagiwara; claims 2, 3, 13, and 14 were not shown unpatentable. The motion to amend was granted in part.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “j. Conclusion Regarding Obviousness Based on Hagiwara (Proposed Substitute Claims) We conclude that Petitioner has shown by a preponderance of the evidence that proposed substitute claims 20, 22, 23, and 26–29 are unpatentable as obvious in view of Hagiwara. We conclude that Petitioner has not shown by a preponderance of the evidence that proposed substitute claims 21, 24 and 25 are unpatentable as obvious in view of Hagiwara. 2. Remaining Grounds of Unpatentability Asserted by Petitioner (Proposed Substitute Claims) In view of our determination that Petitioner has shown by a preponderance of the evidence that proposed substitute claims 20, 22, 23, and 26–29 are unpatentable as obvious in view of Hagiwara, we do not reach Petitioner’s remaining grounds of unpatentability as to these claims. Regarding proposed substitute claims 24 and 25, Petitioner’s contentions regarding the Handbook, Wilson, and Say do not remedy the deficiencies in Petitioner’s contentions regarding Hagiwara, as discussed above. Accordingly, we conclude that a preponderance of the evidence does not show that proposed substitute claims 24 and 25 are unpatentable as obvious based on Hagiwara in view of the Handbook, Wilson, or Say. H.” slip op. at 71

  • ExcludeOther

    “As discussed above, we do not reach the Wilson-Based Grounds with respect to claims 1, 4–12, and 15–19 of the ’574 patent. As for claims 2, 3, 13, and 14, we determine that Petitioner has not shown unpatentability based on the Wilson-Based Grounds, even if Exhibit 1037 and the corresponding portions of Petitioner’s Reply (Paper 37) are not excluded, because Petitioner does not offer Exhibit 1037 to cure the deficiency we noted in Wilson. See Section II.F, supra. For this reason, we dismiss as moot Patent Owner’s motion.” slip op. at 72

  • Expert testimonyPetitioner expert discountedPatent owner expert discountedDecided for patent owner

    “sensor would not have been a motivation to combine Hagiwara’s embodiments” because Hagiwara’s catheter prevents damage to the sensor during insertion and because a sensor with a side sensor window creates a greater risk of damage and vascular injury and reduces exposure to blood, as compared with a sensor with an end sensor window. PO Resp. 20–25. We have considered Patent Owner’s arguments, but, for the reasons discussed above, we are persuaded that Petitioner has established a motivation to combine, notwithstanding the conflicting expert testimony regarding the disadvantages of a side sensor window versus an end sensor window. Neither of the expert opinions on this topic is supported by objective facts or data. Ex. 1006 ¶ 155;13 Ex. 2008 ¶¶ 54–57, 87–95; Ex. 2009, 92:8–97:12. For this reason, we give little or no weight to either side’s expert testimony 13 Dr. Vachon cites “WO 01/13102, Vadgama” (Ex. 1006 ¶ 155), however, this reference was not submitted as an exhibit in this proceeding. on this topic. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (nothing in the Federal Rules of Evidence or Federal Circuit jurisprudence requires the fact finder to credit unsupported assertions of an expert witness). As discussed above, however, there is no disagreement that a side sensor window was a known alternative to an end sensor window. Ex. 1006 ¶¶ 73, 155; Tr. 43:22–44:3. That undisputed fact, together with Petitioner’s other evidence, is sufficient to establish a motivation to combine.” slip op. at 42

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art For purposes of our Institution Decision, we accepted the definition of a person of ordinary skill in the art (“POSITA”) provided by Petitioner’s declarant, Dr. Vachon. Dec. 11 (citing Ex. 1006 ¶ 28). That definition is: a person having a bachelor’s degree or the equivalent training or experience in mechanical engineering, bioengineering, or related field and at least three years of experience relating to biosensor research and development, or a master’s degree or the equivalent training or experience in mechanical engineering, bioengineering, or related field, and at least one year of experience relating to biosensor research and development. Id. Patent (https://www.uspto.gov/sites/default/files/documents/guidance_on_motions_ to_amend_11_2017.pdf); Bosch Automotive Service Solutions, LLC v. Matal, 878 F.3d 1027 (Fed. Cir. 2017); Bosch Automotive Service Solutions, LLC v. Iancu, Order on Petition for Panel Rehearing, No. 2015-1928 (Fed. Cir. Mar. 15, 2018). Owner’s declarant accepts and applies this definition of a POSITA for purposes of his opinions. Ex. 2008 ¶ 30. Neither party’s declarant indicates that any proffered opinion would change depending on the level of ordinary skill in the art. Therefore, consistent with our Institution Decision, we adopt Dr. Vachon’s definition of a POSITA. Ex. 1006 ¶ 28. We also rely on the cited prior art references as reflecting the level of ordinary skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 20

  Patent outcomesUS 7,529,574 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,529,574
• Netflix, Inc. v. Affinity Labs Of Texas, LLCAll claims unpatentable
  PTAB · Feb 28, 2018 · IPR2016-01701 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1, 3–5, 9, 11, 13–18, and 20 are unpatentable as obvious under § 103 over the instituted prior-art combinations.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for petitioner

    “1), “available media” (claim 9), or “a media” (claim 14). Ex. 1001, 18:31, 19:13, 20:4. In IPR2014-00407, which was directed to related U.S. Patent No. 8,359,007 (“the ’007 patent”), we construed “an available media” to mean “content accessible from a source of audio, video, and/or textual information,” but noted that the term is “not limited to a single file, song, or video, and may encompass, at a minimum, a collection of audio or video files.” Samsung Electronics Co. v. Affinity Labs of Texas, LLC, Case IPR2014-00407, slip. op. at 6 (PTAB July 21, 2014) (Paper 15, 6). This construction was supported by dependent claims 12 and 13 of the ’007 patent, which recite that “the available media” may be a “collection of audio files” (claim 12) or a “collection of video files” (claim 13). Id. Patent Owner did not subsequently contest this construction in IPR2014-00407. See Samsung Electronics Co. v. Affinity Labs of Texas, LLC, Case IPR2014- 00407, slip. op. at 6 (PTAB July 20, 2015) (Paper 48) (Final Written Decision); Affinity Labs of Texas, LLC v. Samsung Electronics Co., 669 F. App’x 576 (Fed. Cir. 2016) (Rule 36 affirmance). Because the ’007 patent and the ’802 patent each claim benefit to the same parent application through a line of continuing applications, we must interpret the same terms within these patents consistently. NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1293 (Fed. Cir. 2005) (“Because NTP’s patents all derive from the same parent application and share many common terms, we must interpret the claims consistently across all asserted patents.”). Moreover, neither party provides citations to intrinsic or extrinsic evidence in this proceeding to suggest a different construction of “an available media” should apply to the ’802 patent. Thus, upon review of the record as a whole, we construe “an available media,” as well as the related terms “available media” and “media,” to include “content accessible from a source of audio, video, and/or textual information,” and note that the terms are not limited to a single file, song, or video, and may encompass, at a minimum, a collection of audio or video files.” slip op. at 5

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “The claims of the ’802 patent do not define what a “segment” of an available media is, and the written description of the ’802 patent does not use the terms “segments,” “segment files,” or “independent segment files.” The Specification does note, however, that “an audio file may be formatted, segmented, compressed, modified, etc. for the purpose of providing or communicating the audio invention.” Ex. 1001, 3:26–29. This disclosure supports a construction of “segments,” “segment files,” and “independent segment files” that encompasses portions of an audio file. As noted above, however, the term “an available media” is not limited to an individual song or video file. And, when “an available media” includes a collection of audio or video files, the term segment—which is generally defined as “[e]ach of the parts into which something is or may be divided”—is broad enough to include individual songs, videos, or Internet radio stations within this collection.6 See, e.g., Ex. 3001. Thus, applying the 6 Although Patent Owner indicates that it disagrees with this construction, it does not direct our attention to any portion of the claims, written description, broadest reasonable construction standard, we construe the terms “segments,” “segment files,” and “independent segment files,” when used in conjunction with the terms “available media” or “a media,” to include both individual songs, videos, and/or Internet radio stations in a media collection, as well as individual parts of a single song, video, or Internet broadcast.” slip op. at 7

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner

    “We are not persuaded by these arguments. First, the district court has determined that the claims of the ’802 patent are not in means-plus-function format, and neither party in this proceeding contends that the claims should be interpreted in this manner. Pet. Reply 11. Nor does Patent Owner contend that the prior art asserted in the Petition fails to disclose the claim limitations in question (“collection of instructions” and “delivery resource”). Thus, we do not agree that Petitioner’s failure to identify corresponding structure requires dismissal of the Petition. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)). Second, even if Dr. Mir could not identify the precise contours of several claim limitations before the district court, Petitioner and Dr. Mir correctly concluded that the Board, applying the broadest reasonable construction standard in this proceeding, would adopt constructions of the terms “segment(s)” and “an available media” that would, in combination, encompass parts of an individual song or video, as well as individual songs or videos within a broader media collection. Pet. 21, 41–43, 50. Petitioner and Dr. Mir also provide multiple citations to show where the disputed limitations are taught or suggested in the recited prior art. Patent Owner does not explain why Dr. Mir’s constructions, either express or implied, for the terms in question are incorrect, or why Dr. Mir’s citations to record evidence do not support his conclusions.7 Thus, we do not consider Dr. Mir’s prior testimony to be grounds for denying the Petition or ignoring his uncontested testimony. See Pet. Reply 12 (“Dr. Mir did not ‘guess’ as to the meanings of claim terms. Rather, he was aware of a spectrum of technologies invoked by each ambiguous claim term, and identified elements in the prior art he knew was within the broadest reasonable interpretation of those terms.”).” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “years of experience in the field of computer networking and/or multimedia networks, particularly as those systems relate to media streaming technology.” Pet. 17 (citing Ex. 1007 ¶ 41). Patent Owner does not address the level of ordinary skill in the art relevant to the ’802 patent. Because Petitioner’s uncontested definition of the level of ordinary skill in the art is reasonable and consistent with the art of record, we adopt it for purposes of this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art of record may reflect the level of ordinary skill in the art).” slip op. at 11

  Patent outcomesUS 9,094,802 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,094,802
• Alere Inc. v. Rembrandt Diagnostics, LPSome claims unpatentable
  PTAB · Feb 9, 2018 · IPR2016-01502 · APJ Jon B Tornquist · IPR · Final written decision

  Claim 2 is unpatentable as anticipated by MacKay; claims 3–5 were not shown unpatentable over MacKay and Cipkowski.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mkt’g Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett–Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). For example, a preamble may be limiting when the disputed preamble phrase provides antecedent basis for a claim term in the body of a claim, the specification underscores that the additional structure recited in the preamble is important, or when the patentee clearly relied upon the preamble during prosecution to distinguish the claimed invention from the prior art. Id. at 808–09. “Conversely, a preamble is not limiting ‘where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention,’” id. at 808, or where the patentee uses the preamble to give “a descriptive name to the set of limitations in the body of the claim,” IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434 (Fed. Cir. 2000) (“The phrase ‘control apparatus’ in the preamble merely gives a descriptive name to the set of limitations in the body of the claim that completely set forth the invention.”). The term “device” is not recited in the body of any claim of the ’019 patent,4 the body of claim 1 recites a structurally complete invention, and the preamble phrase “device for collecting and assaying a sample of biological fluid” specifies the intended use of the invention. Thus, we find the claims of the ’019 patent do not support construing “device” as a limitation. See Catalina Mkt’g, 289 F.3d at 808–09.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “device” set forth above requires a single, unitary structure rather than a collection of separate structures that could be used during the test. See id. at 18 (concluding without analysis that the dictionary definition requires a “single, unitary structure”). Indeed, despite the ubiquitous use of the term “device” in patents generally, we are directed to no case in which the term “device,” by itself, was found to require a single, unitary structure. See Manual of Patent Examining Procedure, Section 2106, I (identifying “devices” as one of the four categories of statutory subject matter); Saffran v. Johnson & Johnson, 712 F.3d 549, 565 (Fed. Cir. 2013) (O’Malley concurring in part) (confirming that, in general, the term “device” is generic). Thus, we are not persuaded that the ordinary meaning of the term “device” requires a “single, unitary structure.” See Ex. 1023 ¶ 66 (Dr. Bohannon testifying that the word device, like the words “apparatus” or “system,” is merely a generic term that does not have a specialized meaning in the art and does not require a single, unitary structure). slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We do not find this argument persuasive. As noted above, we do not construe claim 1 to contain a method step of adding fluid to the container. We construe the first wherein clause of claim 1(c), instead, to require a structure that is capable of allowing liquid to enter the container when the flow control channel is properly disposed therein and is capable of directing this liquid to the sample loading zone of the assay test strip without the liquid having to migrate through an intermediate structure, such as a wicking material. We are persuaded—and Patent Owner does not dispute—that the apparatus of MacKay, as disclosed in Figures 8A–C, has a structure that is capable of achieving both functions. See, e.g., Tr. 26:10–30:20. First, given the open nature of the container, it is evident that liquid may be added to the container when the flow control channel is disposed within the container, and Patent Owner does not assert otherwise. See, e.g., id. Second, even if the fluid present in Figures 8A–C is considered, there is no intermediate structure in the container of MacKay that would prevent additional assay sample fluid from entering the container and being immediately directed to the sample loading zone of the assay test strips.6 Based on the foregoing, we find that MacKay discloses every limitation of claims 1 and 2 of the ’019 patent. Accordingly, Petitioner has demonstrated by a preponderance of the evidence that claim 2 is anticipated by MacKay.” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “discloses the subject matter of claims 3–5 of the ’019 patent. Pet. 26–30. Petitioner also asserts that one of ordinary skill in the art would have sought to insert the test trip and flow control channel of MacKay in the holder of Cipkowski, in order to prevent “flooding of the test strip as taught in MacKay.” Id. at 29.” slip op. at 23

  Patent outcomesUS 6,548,019 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,548,019
• Fitbit, Inc. v. Aliphcom, Inc. D/B/A JawboneAll claims unpatentable
  PTAB · Aug 15, 2017 · IPR2016-00607 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 16–19, 23, and 26 are unpatentable as anticipated by Lo; claims 20–22, 24, and 25 are unpatentable as obvious over the specified combinations.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “The broadest reasonable interpretation standard is intended to address just such situations, to encourage patentees to resolve ambiguities in claim language and encourage precision in claim drafting. See Cuozzo, 136 S. Ct. at 2145 (“use of the broadest reasonable construction standard . . . encourages the applicant to draft narrowly. This helps ensure precision while avoiding overly broad claims.”). Therefore, when faced with a claim term which has multiple reasonable interpretations in light of the specification, we must choose the broadest that is still reasonable. Here, that is the interpretation that encompasses a molding formed substantially across a side of the inner molding. We note, however, that we do not read the term as broadly as Fitbit implies, such that “substantially” would permit a small amount of coverage of that single side. We agree with Jawbone that this term of degree was intended to capture insubstantial differences in coverage, such as that depicted in Figure 9 (wherein the outer molding does not cover plug 904 and button 906). Accordingly, an outer molding that is formed substantially across a single side of an inner molding, would “cover all or 7 In our Decision on Institution, we phrased this interpretation as “on top of,” but did not intend to introduce a directional component (such as “above”) to the claim term that is unsupported by the ’811 patent. As Dr. Young understood, “the ‘top’ of the inner molding is the surface of the inner molding, not just the side that happens to point up as the ‘top’ when viewed in a cross-sectional image.” Ex. 2001 ¶ 47. To remove any potential confusion, we have rephrased the interpretation as “across a side of.” substantially all” of that inner molding within the broadest reasonable interpretation in light of the ’811 patent specification.” slip op. at 22

  • Expert testimonyPatent owner expert discountedPetitioner expert creditedDecided for petitioner

    “The problem with Dr. Young’s testimony—and, in turn, Jawbone’s position—is that it rests on a flawed premise. Contrary to Dr. Young’s statements, the ’811 patent does not state conclusively that the purpose of the outer molding recited in claim 16 is protection of the inner molding. The specification states that the outer molding “may also be configured to completely enclose or encase an underlying item in order to protect the inner molding, the protective layer, and any elements from damage.” Ex. 1001, 7:29–32 (emphasis added). But the specification also states that the outer molding may be used to provide “surface ornamentation” to an object. Id. at 6:6–8. Furthermore, the specification acknowledges that “protective” is used in two contexts in the patent: providing protection to the structure to which it is applied, but also “a protective property may be a characteristic of a coating that, when applied, protects a wearer or users” (for example, an anti-bacterial property). Id. at 12:36–51 (emphasis added). Neither Jawbone nor Dr. Young address why, if the purpose of the outer molding is to protect a user, it would be necessary to fully enclose the inner moldings instead of merely covering the surface that is to be in contact with a user. Dr. Young also cites, as evidence of the protective nature of the outer molding, several dependent claims which recite that the outer molding has protective features such as “protect[ing] against ultraviolet radiation” (claim 4) or a “waterproof seal” (claim 6). Ex. 2001 ¶ 51. The flaw in this argument is that these dependent claims depend from claim 1, not claim 16. While they may signal that the outer molding of claim 1 has a protective purpose, they are not relevant to claim 16. By contrast, claim 16 recites that at least one of the inner moldings has a protective property, and the dependent claims further specify protective properties for that inner molding, such as waterproofing, oleophobicity (fingerprint resistance), or antibacterial. Dr. Young hypothesized that there might be a reason to make an inner molding antibacterial, even if it is completely enclosed (Ex. 1029 61:4–13), but was unable to provide a single example of a product with a fully encased, antibacterial inner molding (id. at 62:24–63:7). The fact that claim 16’s inner molding has a protective property, therefore, diminishes the credibility of Dr. Young’s testimony that the outer molding must fully encase and protect the inner molding. In sum, we disagree with Dr. Young’s conclusion that the outer molding of claim 16 must have a protective property, and that in that context the only reasonable construction of “covers all or substantially all” is a molding that encases or encloses the inner molding.5 Jawbone’s remaining” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Reviewing Fitbit’s assertions regarding the written description and figures of Lo, we find that the reference discloses in a single embodiment all limitations of claim 16. Jawbone does not challenge the Petition as to the first two steps of claim 16, and we find that Lo discloses both applying a protective material substantially over one or more of a plurality of elements, and forming a protective inner molding substantially over that protective material. Furthermore, for the reasons discussed above, we find that Lo’s transmission medium is an outer molding that covers all or substantially all of the inner molding. With respect to dependent claims 17–19, 23, and 26, we find that Lo discloses the additional elements of these claims as set forth by Fitbit in its Petition. Pet. 24–28. For example, claim 18 requires that the protective property of the inner molding is waterproofing, and claim 19 recites water-resistance. We find that Lo discloses that its plastic housing provides water resistant properties. Ex. 1003, Abstract, ¶ 121. Jawbone does not contest any of these additional claim limitations or argue separately the patentability of the dependent claims apart from independent claim 16. Instead, Jawbone relies on its argument that there is no outer molding as recited in claim 16 (PO Resp. 23), and that Fitbit improperly combined embodiments (id. at 26), arguments we discussed and rejected above. For these reasons, and based on a review of the complete record, we find claims 16–19, 23, and 26 are anticipated by Lo.” slip op. at 28

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “Fitbit responds by arguing that, even if Lo requires ultrasonic transmission, a person of skill in the art “would have naturally selected a coating that does not render the Lo heart monitor useless.” Pet. Reply 23. While this is true, it also admits the premise of Jawbone’s argument. In other words, if the coatings of Huang render Lo’s monitor useless, a person of ordinary skill would not have combined Huang with Lo. Nevertheless, we do not agree with Jawbone’s characterization of Lo as describing ultrasonic transmission of the monitor as “critical.” The portion of Lo cited by Jawbone describes prior art devices, and states that “[p]rior ultrasonic monitors require applying water or an aqueous gel between the transducer module and the living subject to eliminate any air gap.” Ex. 1003 ¶ 17 (emphasis added). There is no statement that the plastic housing of the module—the “inner molding” of claim 16 that must have the protective properties supplied by Huang—must be ultrasonically transmissive. Indeed, it is the transmission medium of Lo that is explicitly described as having ultrasonic transmission properties, and Lo’s transmission medium addresses this deficiency in prior art devices. Id. at 58–59. Lo does not state whether its plastic housing is suitable for ultrasonic transmission, and there is no basis for concluding that the addition of Huang’s coatings—whether or not they disrupt ultrasonic transmission— would result in a non-functional device. We find that Fitbit, relying on the testimony of Dr. Cairns, has articulated a reason with rational underpinning for combining the coatings of Huang with the device of Lo. Pet. 29–30 (stating that it would have been obvious to “utilize the well understood application of hydrophobic materials, such as in Huang, to have imparted protective properties to the plastic housing in Lo”); Ex. 1002 ¶¶ 64–66. This combination would have been within the level of ordinary skill in the art, on which the experts largely agree.9 Jawbone’s arguments do not convince us otherwise. Furthermore, we find that the combination of Lo and Huang in this manner teaches all limitations of claims 20–22 for the reasons given by Fitbit, assertions that” slip op. at 30

  Patent outcomesUS 8,529,811 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,529,811
• Husky Injection Molding Systems Ltd. / Husky Injection Molding Systems, Inc. v. Plastic Engineering & Technical Systems, Inc.All claims unpatentable
  PTAB · Jun 15, 2017 · IPR2016-00433 · APJ Jennifer Meyer Chagnon · IPR · Final written decision

  Claims 1–32 are unpatentable as obvious over Moss and Erhart; Patent Owner’s motion to exclude Dr. Slocum’s declarations is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “to whether the hypothetical person of ordinary skill must have specific “experience designing and operating injection molding equipment using hot runners.” See id. at 25–26. While we agree with Patent Owner that one of skill in the art will have some familiarity or experience in valve gate assemblies for injection molding machines, we are not persuaded by Patent Owner’s assertion that the relevant art should be defined so narrowly as to specifically require significant experience designing and operating injection molding machines. Patent Owner presents no evidence that the design of injection molding machines is particularly specialized and beyond the skill of a mechanical engineer. Thus, we disagree with Patent Owner and decline to insert any specific amount of experience with, or specialized knowledge of, injection molding machines into the definition of one of ordinary skill in the art at the time of the invention. This conclusion is further supported by the specification of the ’925 patent. The benefits described in the ’925 patent stem from the claimed actuator assembly, rather than from any distinctions in the design of the injection molding machine. For example, the ’925 patent describes the following advantages: “regulating a flow of molten material into a mold with more control over the molding process,” “the valve gate assembly can infinitely adjust the position of the valve . . . , thereby adjusting the flow rate,” “fast adjustment of the valve and accurate adjustment of the valve to 0.001 inches,” “eliminat[ing] the use of hydraulics,” and “eliminat[ing] the use of pneumatics.” Ex. 1001, 2:26–42 (emphases added). As described in the ’925 patent, these benefits are due to actuating system 36. See, e.g., id. at 4:45–5:9. Manifold assembly 12 and valve pin 32 of the ’925 patent, on the other hand, are described as “conventional and known in the art.” Id. at 4:8–10, 4:23–24. For these reasons, we are persuaded that Petitioner’s definition more accurately reflects the level of ordinary skill, and adopt Petitioner’s definition for purposes of this Decision.5” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We find, based on the complete record now before us, that Dr. Slocum’s qualifications align sufficiently with the challenged subject matter and that he has sufficient expertise to be of assistance, particularly on issues related to the claimed actuating system. During the oral hearing, Patent Owner’s counsel admitted that Dr. Slocum has “a lot of expertise in actuators.” Tr. 44:9–12; see also id. at 45:17–22 (“JUDGE TORNQUIST: So in your opinion is Dr. Slocum qualified to testify about force-absorbing mechanisms in actuators? MR. WARN: I think there is no question that Dr. Slocum is very skilled in that art. He knows a lot about that subject.”). We, thus, are persuaded that Dr. Slocum is qualified to testify as to the knowledge of a person of ordinary skill in the art of the ’925 patent.” slip op. at 14

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “C. Claim Construction In an inter partes review, claim terms in an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). We generally give claim terms their ordinary and customary meaning. See Translogic Tech., 504 F.3d at 1257 (“The ordinary and customary meaning ‘is the meaning that the term would have to a person of ordinary skill in the art in question.’” (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc))). The parties’ dispute, however, does not require express construction of any claim term. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)); see also Tr. 13:1–5 (Petitioner noting that no claim construction issues remain in this case).” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “Erhart expressly teaches that its actuator improves upon the hydraulic- and pneumatic-type actuators discussed in Moss, as well as the electric motor/lead screw type actuators selected to replace hydraulic and pneumatic actuators in Moss’s injection molding machines. Ex. 1002, 1:11–32 (Moss explaining that traditional hydraulic and pneumatic actuators are “complex in design, maintenance intensive, bulky in size and relatively undesirable in environments of higher cleanliness”); Ex. 1003, 1:20–53, 2:10–13 (Erhart explaining that the disclosed actuators improve upon hydraulic and pneumatic actuators, as well as the motor/lead screw type actuators utilized in Moss). In particular, Erhart discloses that its planetary roller screw drive system provides better control than pneumatic and hydraulic actuators and is smaller than the motor/lead screw type actuators utilized in Moss. Ex. 1003, 1:20–32, 1:47–52, 2:9–14. Dr. Slocum provides persuasive testimony that smaller motors and actuators were known to be desirable in injection molding machines. Ex. 1004 ¶¶ 35, 61 (asserting that large actuators/electric motors “can limit how closely gates can be positioned adjacent each other”); see Ex. 1002, 4:44, 4:62 (indicating that the disclosed injection molding system utilizes multiple gates); Ex. 1003, 1:43–53, 2:10–14; Pet. 23–25. Dr. Slocum also provides persuasive testimony that it was known in the art that the planetary roller screw drive system of Erhart is more efficient than the motor/lead screw system of Moss. Ex. 1004 ¶¶ 61–62 (Dr. Slocum testifying that the rolling contact roller screw of Erhart has an efficiency of about 95%, whereas the “sliding contact thread leadscrew actuator” of Moss has an efficiency of about 30%); see Pet. 25. Patent Owner does not provide any testimony or persuasive evidence to rebut the testimony of Dr. Slocum on these points.” slip op. at 25

  Patent outcomesUS 7,845,925 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,845,925
• Husky Injection Molding Systems Ltd. / Husky Injection Molding Systems, Inc. v. Plastic Engineering & Technical Services, Inc.All claims unpatentable
  PTAB · Jun 15, 2017 · IPR2016-00432 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1–9 are unpatentable as obvious over Moss and Erhart because the combination teaches every limitation and offers a reason to combine the references.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties’ dispute regarding the level of ordinary skill comes down to whether the hypothetical person of ordinary skill must have specific “experience designing and operating injection molding equipment using hot 3 Patent Owner also has filed a Motion to Exclude Dr. Slocum’s Testimony (Ex. 1004; Ex. 1009). See Paper 23. We address Patent Owner’s Motion to Exclude separately, below. runners.” See id. at 25. While we agree with Patent Owner that one of skill in the art will have some familiarity or experience in valve gate assemblies for injection molding machines, we are not persuaded by Patent Owner’s assertion that the relevant art should be defined so narrowly as to specifically require significant experience designing and operating injection molding machines. Patent Owner presents no evidence that the design of injection molding machines is particularly specialized and beyond the skill of a mechanical engineer. Thus, we disagree with Patent Owner and decline to insert any specific amount of experience with, or specialized knowledge of, injection molding machines into the definition of one of ordinary skill in the art at the time of the invention. This conclusion is further supported by the specification of the ’191 patent. The benefits described in the ’191 patent stem from the claimed actuator assembly, rather than from any distinctions in the design of the injection molding machine. For example, the ’191 patent describes the following advantages: “regulating a flow of molten material into a mold with more control over the molding process,” “the valve gate assembly can infinitely adjust the position of the valve . . . , thereby adjusting the flow rate,” “fast adjustment of the valve and accurate adjustment of the valve to 0.001 inches,” “eliminat[ing] the use of hydraulics,” and “eliminat[ing] the use of pneumatics.” Ex. 1001, 2:27–42 (emphases added). As described in the ’191 patent, these benefits are due to actuating system 36. See, e.g., id. at 4:45–5:9. Manifold assembly 12 and valve pin 32 of the ’191 patent, on the other hand, are described as “conventional and known in the art.” Id. at 4:8–10, 4:23–24. For these reasons, we are persuaded that Petitioner’s definition more accurately reflects the level of ordinary skill, and adopt Petitioner’s definition for purposes of this Decision.4” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “injection molding machines that include an actuator that moves the valve or pin of the valve gate assembly to open and close the valve gate. See Ex. 1001, 13:36–46; PO Resp. 23–25; Pet. 4. Dr. Slocum has an undergraduate degree, master’s degree, and a Ph.D. in Mechanical Engineering, all from MIT, has been a professor of engineering at MIT since 1985, and previously worked as a mechanical engineer for the National Institute for Standards and Technology. Ex. 1004 ¶¶ 2–3. Dr. Slocum states that he has experience with “molding technology, including the design of mold opening and closing systems, as well as precision machine elements and systems which would be used in computer controlled injection molding machines.” Id. ¶ 5. Dr. Slocum also has authored books on machine design (id. ¶ 4), and purports to have experience “in the field of precision machine components, including actuators employing transmission components to convert rotary motion into linear motion of an output shaft” (id. ¶ 7). We note also there is no requirement of a perfect match between a declarant’s experience and the field of the art in question. See SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010); see also Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding district court’s admission of testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). A person need not be a person of ordinary skill in the art in order to testify as an expert under Fed. R. Evid. 702, but rather must be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (noting that under Fed. R. Evid. 702, the expert must possess sufficient “expertise to be of assistance” to the trier of fact). We find, based on the complete record now before us, that Dr. Slocum’s qualifications align sufficiently with the challenged subject matter and that he has sufficient expertise to be of assistance, particularly on issues related to the claimed actuating system. During the oral hearing, Patent Owner’s counsel admitted that Dr. Slocum has “a lot of expertise in actuators.” Tr. 44:9–12; see also id. at 45:17–22 (JUDGE TORNQUIST: So in your opinion is Dr. Slocum qualified to testify about force-absorbing mechanisms in actuators? MR. WARN: I think there is no question that Dr. Slocum is very skilled in that art. He knows a lot about that subject.). We, thus, are persuaded that Dr. Slocum is qualified to testify as to the knowledge of a person of ordinary skill in the art of the ’191 patent.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner proposes constructions for the terms “axially moveable,” “circumscribing,” and “a closed-loop feedback control system.” Pet. 11–13. At oral argument, however, Petitioner noted that no claim construction issues remain in this case. Tr. 13:1–5. Patent Owner does not address Petitioner’s proposed constructions or assert that any other claim terms 1 U.S. Patent No. 6,294,122 B1, iss. Sept. 25, 2001 (Ex. 1002, “Moss”). 2 U.S. Patent No. 5,557,154, iss. Sept. 17, 1996 (Ex. 1003, “Erhart”). require construction for purposes of this Final Written Decision. Accordingly, we determine that no claim terms require construction for purposes of this Final Written Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 6

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “B. 35 U.S.C. § 325(d) Patent Owner argues that, because Moss and Erhart were considered during prosecution of the application leading to the ’191 patent, we should exercise our discretion under 35 U.S.C. § 325(d) to deny institution of inter partes review. PO Resp. 9–12. “In determining whether to institute or order a proceeding,” 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.” 35 U.S.C. § 325(d). As we have already decided to institute a proceeding, Patent Owner’s § 325(d) argument is moot. See id. Even if we were to review the substance of the argument, however, we would not exercise our discretion in this case as there is insufficient evidence that the combination of Erhart and Moss—as formulated by Petitioner—was ever considered by the Examiner or applied in any rejection of the claims. See Dec. on Inst. 6–7.” slip op. at 7

  Patent outcomesUS 8,192,191 unpatentable
  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 8,192,191
• Husky Injection Molding Systems Ltd. / Husky Injection Molding Systems, Inc. v. Plastics Engineering & Technical Services, Inc.All claims unpatentable
  PTAB · Jun 15, 2017 · IPR2016-00431 · APJ Jeffrey W Abraham · IPR · Final written decision

  Claims 1–22 are unpatentable as obvious over Moss and Erhart because the combination teaches their limitations and a skilled artisan would have had reason to combine the references.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties’ dispute regarding the level of ordinary skill comes down to whether the hypothetical person of ordinary skill must have specific “experience designing and operating injection molding equipment using hot runners.” See id. at 25–26. While we agree with Patent Owner that one of skill in the art will have some familiarity or experience in valve gate assemblies for injection molding machines, we are not persuaded by Patent Owner’s assertion that the relevant art should be defined so narrowly as to specifically require significant experience designing and operating injection molding machines. Patent Owner presents no evidence that the design of injection molding machines is particularly specialized and beyond the skill of a mechanical engineer. Thus, we disagree with Patent Owner and decline to insert any specific amount of experience with, or specialized knowledge of, injection molding machines into the definition of one of ordinary skill in the art at the time of the invention.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Patent Owner argues that Dr. Slocum fails to adequately establish his familiarity with injection molding machines, molding processes, or computer controlled motion of injection molding equipment, and “tries to draw the Board’s focus away from injection molding machines to a more generic or academic subject matter that he deems himself qualified to give an opinion.” PO Resp. 20–21, 25–26. During the oral hearing, Patent Owner, referring to Dr. Slocum’s cross-examination testimony, argued that Dr. Slocum does not, in fact, have injection molding experience. Tr. 43:17– 44:1; see Mot. for Obs. 10–11 (citing Ex. 2006, 35:15–36:15, 121:10– 122:24). Dr. Slocum, however, expressly testified that he had designed injection molding devices, made molds used for injection molding, and run injection molding machines in the lab at the Massachusetts Institute of Technology (“MIT”). Ex. 1004 ¶ 5; Ex. 2006, 31:1–4, 36:1–5; see Pet. Resp. 14–15. Based on the evidence before us, we find that Dr. Slocum has sufficient familiarity with injection molding machines. Further, as discussed above, we are not persuaded that the level of ordinary skill requires any specific amount of experience with, or specialized knowledge of, injection molding machines.” slip op. at 12

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “B. 35 U.S.C. § 325(d) Patent Owner argues that, because Moss and Erhart were considered during prosecution of the application leading to the ’436 patent, we should exercise our discretion under 35 U.S.C. § 325(d) to deny institution of inter partes review. PO Resp. 9–12. “In determining whether to institute or order a proceeding,” 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.” 35 U.S.C. § 325(d). As we have already decided to institute a proceeding, Patent Owner’s § 325(d) argument is moot. See id. Even if we were to review the substance of the § 325(d) argument, however, for the reasons set forth in the Institution Decision we would not be persuaded to exercise our discretion in this case as there is insufficient evidence that the combination of Erhart and Moss was ever considered by the Examiner or applied in any rejection of the claims. Dec. on Inst. 8–9.” slip op. at 9

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “D. The Instituted Ground of Unpatentability We instituted trial based on the ground that claims 1–22 are unpatentable under 35 U.S.C. § 103(a) over Moss1 and Erhart.2 Dec. on Inst. 25.” slip op. at 8

  Patent outcomesUS 7,588,436 unpatentable
  § 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 7,588,436

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.