• Cradlepoint, Inc. / Dell Inc. et al. v. Sisvel International S.A.All claims unpatentable
  PTAB · Dec 13, 2021 · IPR2020-01070 · APJ Terrence W Mcmillin · IPR · Final written decision

  Claims 10, 11, 13, 17, and 24 are unpatentable; the revised motion to amend proposing claims 36–40 is denied.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedOther

    “We do not find it necessary to resolve the differences between the contentions of the parties as to the appropriate level of skill in the art. Neither party explicitly applies or relies on its specific proposed level of skill in the art in support of its contentions relating to patentability. At oral argument, Petitioner’s counsel stated that there was no material dispute relating to the level of ordinary skill in the art. Tr. 7:18–23; see also Paper 51, 11 (“The results of the invalidity analysis are the same regardless of [the] definition used.”). In its Reply, Petitioner acknowledged, “[r]egardless of which POSITA definition is adopted, a POSITA’s understanding of the ’698 patent and prior art, reasons for making the combinations, and expectations of success would have been the same.” been the same.” Sur-reply 1. And, Patent Owner’s technical expert, Mr. Bates, acknowledged the differences between the contentions of the parties relating to the level of ordinary skill in the art are insignificant. Ex. 2006 (Bates Decl.) ¶ 22 (“[A]pplying Petitioner’s level of skill would not change my opinions.”). We agree and would make the same factual findings and reach the same ultimate conclusions with respect to both the challenged claims and the revised substitute claims under either of the contentions of the parties. To the extent necessary to conducting our analysis of the arguments and evidence in this proceeding, we adopt Patent Owner’s contention as to the level of ordinary skill in the art. It is the broader of the two and consistent with the level of skill reflected in the Specification and prior art.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner

    “There is no textual basis in the claim language for requiring a GSM or UMTS telecommunications network. Claim 10’s language is not plainly limited to GSM or UMTS telecommunications networks. Patent Owner identifies no disclaimer or explicit definition of “connection rejection message” in the ’698 patent that justifies importing a requirement for a GSM or UMTS telecommunications network. Patent Owner attempts to support its construction with this sentence from the Specification of the ’698 patent: “The invention is applicable in many different cellular telecommunication systems, such as the UMTS system or the GSM system.” Resp. 10 (citing Ex. 1001, 7:41–43). However, this language clearly is permissive, not mandatory. At most, this sentence explains that the cellular telecommunication system can be a UMTS system or GSM system; not that the cellular telecommunication system must be a UMTS system or GSM system.” slip op. at 13

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

    “There is no textual basis in the claims for requiring that the frequency information comprise multiple channels. Patent Owner identifies no disclaimer or explicit definition of “frequency parameter” in the ’698 patent that justifies importing a requirement that the frequency information comprise multiple channels.” slip op. at 15

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

    “Petitioner’s showing with regard to this limitation is well-supported and persuasive. We find Kallin discloses “receiving a connection rejection message” as recited in claim 10.” slip op. at 29

  Patent outcomesUS 7,433,698 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,433,698
• Sotera Wireless, Inc. v. Masimo CorporationAll claims unpatentable
  PTAB · Nov 29, 2021 · IPR2020-01078 · APJ George R Hoskins · IPR · Final written decision

  Claims 1–10 and 12–18 are unpatentable under § 103 over Bock and Kiani, or Bock, Woehrle, and Kiani, as applicable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “to the ’218 patent (“POSITA”) “would have been a person with at least a B.S. degree in electrical or biomedical engineering or a related field with at least two years’ experience designing patient monitoring systems.” Pet. 9–10 (citing Ex. 1003 ¶¶ 33–40). Also: “Less work experience may be compensated by a higher level of education, such as a master’s degree, and vice versa.” Id. Patent Owner “does not dispute Petitioner’s characterization of the level of ordinary skill in the art,” which Patent Owner describes as “[r]elatively [l]ow.” PO Resp. 12; Ex. 2011 ¶¶ 18–19. We conclude the parties’ agreed-upon level of ordinary skill is consistent with the ’218 patent and the asserted prior art. We, therefore, apply it here.” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We disagree with Patent Owner’s characterization of this testimony as establishing that Dr. Yanulis’s patentability opinions are premised on what he personally would have known and done in 2010. Instead, Dr. Yanulis acknowledged that he personally had decades of experience in the pertinent field, and then testified that such extensive experience (which is not required for a POSITA) is not needed to understand Bock and the other prior art at issue in this proceeding. See id. at 56:12–57:6. Thus, as with Dr. Yanulis’s declaration, his deposition testimony was that he applied the correct legal standard for obviousness, by testifying as to what a POSITA would have known and done in 2010. This is confirmed by his later deposition testimony: “I was referring to what I would expect a [POSITA] should know reviewing this challenge[d] patent and the prior art,” and “I was just reviewing based on my definition of a [POSITA]” even though “I think it’s very fair to say I have more expertise than the typical [POSITA].” Id. at 136:2–9 (emphases added). Thus, after reviewing the entirety of Dr. Yanulis’s testimony cited by the parties in this proceeding, we determine he applied the correct legal standard for obviousness, by opining as to what a POSITA would have known and done in 2010.” slip op. at 12

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

    “recited “second alarm threshold” must be the most extreme alarm threshold that the processor determines has been exceeded by the measured oxygen saturation values to trigger the alarm. Instead, the operative verbiage is that the processor is “configured to . . . trigger a second alarm based on” the measured oxygen saturation values exceeding the second alarm threshold. The phrase “based on” requires that the processor must determine the measured oxygen saturation values exceed the second alarm threshold, as a necessary condition precedent to the processor triggering the alarm. See, e.g., Ex. 1043, 3 (defining the verb “base on” to mean “to use particular . . . facts to make a decision [or] do a calculation”). The claim language does not exclude the processor from additionally determining that the measured oxygen saturation values further exceed a more extreme (i.e., lower) alarm threshold, as a second necessary condition precedent to the processor triggering the alarm, as Patent Owner would construe the claim. Patent Owner’s construction would re-write limitation 1(i) to recite something akin to “trigger[ing] a second alarm based on at least one value of the oxygen saturation values obtained over the second period of time exceeding the second alarm threshold, and no other more extreme threshold,” which the claim does not recite.” slip op. at 22

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

    “(v) Construction of Limitation 1(i) We construe limitation 1(i) to require that the processor must determine that the measured oxygen saturation values exceed the second alarm threshold as a necessary condition precedent to triggering the alarm. However, the second alarm threshold need not be the most extreme alarm threshold applied by the processor. Claim 1 is open to additional alarm thresholds also being applied by the processor, which are more extreme than the second alarm threshold, so long as the second alarm threshold determination is made by the processor. 3. Claims 8 and 12 Independent claims 8 and 12 each contain limitations that are substantially identical to limitation 1(i) in claim 1. See Ex. 1001, 15:28–33 (claim 8), 16:26–32 (claim 12). Patent Owner argues we “should apply the construction of [l]imitation 1(i)” to these limitations in claims 8 and 12. PO Resp. 28–29; Ex. 2011 ¶ 65. We agree. Therefore, we construe these limitations in the same fashion as limitation 1(i). See supra Section III.C.2(e)(v). 4. Other Claim Terms We determine no further explicit construction of any claim term is” slip op. at 33

  Patent outcomesUS RE47,218 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
• Sotera Wireless, Inc. v. Masimo CorporationAll claims unpatentable
  PTAB · Nov 19, 2021 · IPR2020-01019 · APJ Jennifer Meyer Chagnon · IPR · Final written decision

  Claims 1–25 are unpatentable as obvious over Saidara and Malangi, with claims 3–5, 10–12, 14, 16–17, and 24 also obvious over Saidara, Malangi, and Hickle; Baker-1 grounds were not reached.

  RulingsFinal written decision

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

    “embodiment of the claimed invention includes suspension of an activated alarm and no disclosed embodiment includes parameter-specific pre-alarm delays. Based on the overwhelming and clear disclosure in the Specification of the RE353 patent, we agree with Petitioner that “the correct construction—the construction that most accurately delineates the scope of the claimed invention” requires suspension of an activated alarm, and precludes delays or suspensions that occur before activation of an alarm, i.e., pre-alarm delays. See PPC Broadband, Inc. v. Corning Optical Comm’ns RF, LLC, 815 F.3d 734, 740–42 (Fed. Cir. 2016). We recognize that we do not import limitations from the Specification into the claims. Thorner, 669 F.3d at 1366–67 (“We do not read limitations from the specification into claims.”). It is indisputable, however, that claims must be interpreted in light of the Specification of which they are a part. Phillips, 415 F.3d at 1315–1316. This is because the claims “do not stand alone. Rather, they are part of ‘a fully integrated written instrument,’ consisting principally of a specification that concludes with the claims. For that reason, claims ‘must be read in view of the specification, of which they are a part.’” Id. As the Court of Appeals for the Federal Circuit has stated, “the specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.” Vitrionics Corp. v. Conceptronic, Inc., 90 F.3d 1576,” slip op. at 25

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person having ordinary skill in the art “would have been a person with at least a B.S. degree in electrical or biomedical engineering or a related field with at least two years’ experience designing patient monitoring systems,” wherein “[l]ess work experience may be compensated by a higher level of education, and vice versa.” Pet. 13 (citing Ex. 1003 ¶¶ 33–41); see Ex. 1040 ¶ 28. Patent Owner applies the level of ordinary skill in the art identified by Petitioner. PO Resp. 8 n.5 (citing Ex. 2011 ¶¶ 18–19). We adopt Petitioner’s assessment, which appears consistent with the level of skill reflected in the Specification and prior art.” slip op. at 12

  • Expert testimonyPatent owner expert discountedDecided for patent owner

    “Sur-reply 4–5. We recognize Mr. Goldberg’s testimony that, “in reading the patent as a whole, I believe that pre-alarm delays are, in fact, disclosed.” Ex. 1042, 118:2–13. When pressed to show support in the Specification, however, Mr. Goldberg pointed, first, to the disclosed “other suspend initiator” and, second, to the disclosed alarm suspend firmware that, he contends, “implies . . . a[n] ability to suspend the alarm other than by the alarm silence [button].” See id. at 118:20–123:4 (pointing to Ex. 1001, 4:60–63, 5:37, Figs. 2, 4). We do not find this testimony or Patent Owner’s argument persuasive. First, that the claimed system could suspend the alarm in a manner other than the described silence button (i.e., with the “other suspend initiator”), does not alter the fact that the Specification only discloses suspending an alarm after it has been activated. Second, the firmware upon which Mr. Goldberg relies is disclosed as “respond[ing] to an alarm silence button press 288.” Ex. 1001, 5:38–41. Accordingly, we give little weight to Mr. Goldberg’s conclusory testimony that pre-alarm delays are disclosed, because this testimony is unsupported by any persuasive cited evidence. See 37 C.F.R. § 42.65(a).” slip op. at 28

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundNot shown unpatentableMixed

    “The Petition provides limited guidance in this regard. Petitioner contends that it would have been obvious to also monitor blood pressure with Saidara’s device, as taught by Malangi, and provides reasons why such a modification would have been desirable. Pet. 68. Even accepting these reasons, for the sake of argument, the Petition is silent as to how a skilled artisan would have implemented Malangi’s teachings in Saidara. Id. at 67– 69. In its Reply, Petitioner cites testimony that is insufficient to support its contentions. For example, Petitioner relies upon the testimony of its expert, Dr. Bergeron, that a person of ordinary skill in the art “understood how [to] measure blood pressure.” Ex. 1040 ¶ 109; Pet. Reply 23. Petitioner also relies on the testimony of Patent Owner’s expert, Mr. Goldberg, that blood pressure cuffs were prevalent. Ex. 1042, 45:18–46:7; Pet. Reply 23. Both points may well be true. However, neither Petitioner, nor the cited expert testimony, explains persuasively how a skilled artisan would have known how to integrate Malangi’s teaching of monitoring and alarming for blood pressure (whether using a prevalent and well-known blood pressure cuff or any other device) with Saidara’s particular system, nor do they discuss the detriments or benefits of such a modification, e.g., the increased size and complexity of incorporating a blood pressure cuff into Saidara’s device. It is Petitioner’s burden to do so. It is insufficient to merely establish that it was known to use blood pressure cuffs to monitor that parameter.14 For the foregoing reasons, we agree with Patent Owner that Petitioner fails to explain sufficiently how a person of ordinary skill in the art would have modified Saidara to also monitor, alarm, and delay alarms for blood pressure, and leaves it to the Board to piece together the proposed modification. PO Resp. 61–62; but see Pet. Reply 25, and Ex. 1040 ¶¶ 109– 111 (explaining how, apart from blood pressure monitoring, SpO2 monitoring and alarming would have been achieved in the combination).” slip op. at 44

  Patent outcomesUS RE47,353 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
• Sotera Wireless, Inc. v. Masimo CorporationAll claims unpatentable
  PTAB · Nov 19, 2021 · IPR2020-01033 · APJ Amanda F Wieker · IPR · Final written decision

  Claims 1–24 are unpatentable; claims 1–24 are shown unpatentable over Saidara and Malangi, with specified dependent claims also obvious over combinations including Hickle.

  RulingsFinal written decision

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

    “Analysis Contrary to Patent Owner’s assertions, we find that every disclosed embodiment of the claimed invention includes suspension of an activated alarm and no disclosed embodiment includes parameter-specific pre-alarm delays. Based on the overwhelming and clear disclosure in the Specification of the ’249 patent, we agree with Petitioner that “the correct construction— the construction that most accurately delineates the scope of the claimed invention,” requires suspending or holding an activated alarm, and precludes holds or suspensions that occur before activation of an alarm, i.e., pre-alarm delays. See PPC Broadband, Inc. v. Corning Optical Comm’ns RF, LLC, 815 F.3d 734, 740–42 (Fed. Cir. 2016).” slip op. at 21

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art “would have been a person with at least a B.S. degree in electrical or biomedical engineering or a related field with at least two years’ experience designing patient monitoring systems,” wherein “[l]ess work experience may be compensated by a higher level of education, and vice versa.” Pet. 13 (citing Ex. 1003 ¶¶ 33–41). Patent Owner applies the level of ordinary skill in the art identified by Petitioner. PO Resp. 9 n.5 (citing Ex. 2011 ¶¶ 18–19). We adopt Petitioner’s assessment, which appears consistent with the level of skill reflected in the Specification and prior art.” slip op. at 28

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMotivation foundMixed

    “As an initial matter, we agree with Patent Owner’s arguments about the proposed modification of Saidara to include blood pressure monitoring and alarming. Primarily, we agree that Petitioner fails to meet its burden of explaining how a person of ordinary skill in the art would have incorporated Malangi’s teaching of blood pressure monitoring and alarming with Saidara’s device. PO Resp. 55–56, 62–63. The Petition provides limited guidance in this regard. Petitioner contends that it would have been obvious to also monitor blood pressure with Saidara’s device, as taught by Malangi, and provides reasons why such a modification would have been desirable. Pet. 68. Even accepting these reasons, for the sake of argument, the Petition is silent as to how a skilled artisan would have implemented Malangi’s teachings in Saidara. Id. at 67– 69. In its Reply, Petitioner cites testimony that is insufficient to support its contentions. For example, Petitioner relies upon the testimony of its expert, Dr. Bergeron, that a person of ordinary skill in the art “understood how [to] measure blood pressure.” Ex. 1040 ¶ 113; Pet. Reply 23. Petitioner also relies on the testimony of Patent Owner’s expert, Mr. Goldberg, that blood pressure cuffs were prevalent. Ex. 1042, 45:18–46:7; Pet. Reply 23. Both points may well be true. However, neither Petitioner, nor the cited expert testimony, explains persuasively how a skilled artisan would have known how to integrate Malangi’s teaching of monitoring and alarming for blood pressure (whether using a prevalent and well-known blood pressure cuff or any other device) with Saidara’s particular system, nor do they discuss the detriments or benefits of such a modification, e.g., the increased size and complexity of incorporating a blood pressure cuff into Saidara’s device. It is Petitioner’s burden to do so. It is insufficient to merely establish that it was known to use blood pressure cuffs to monitor that parameter.13 For the foregoing reasons, we agree with Patent Owner that Petitioner” slip op. at 43

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

  Patent outcomesUS RE47,249 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
• Sotera Wireless, Inc. v. Masimo CorporationAll claims unpatentable
  PTAB · Nov 19, 2021 · IPR2020-00967 · APJ Jennifer Meyer Chagnon · IPR · Final written decision

  Claims 1–26 are unpatentable, principally as obvious over Saidara and Malangi; the Board did not reach the alternative Baker-1 grounds.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner

    “3. Discussion Contrary to Patent Owner’s assertions, we find that every disclosed embodiment of the claimed invention includes suspension of an activated alarm and no disclosed embodiment includes parameter-specific pre-alarm delays. Based on the overwhelming and clear disclosure in the Specification of the RE244 patent, we agree with Petitioner that “the correct construction—the construction that most accurately delineates the scope of the claimed invention” requires delay or suspension of an activated alarm, and precludes delays or suspensions that occur before activation of an alarm, i.e., pre-alarm delays. See PPC Broadband, Inc. v. Corning Optical Comm’ns RF, LLC, 815 F.3d 734, 740–42 (Fed. Cir. 2016).” slip op. at 24

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

    “Petition does not provide a means-plus-function construction as required by 37 C.F.R. § 42.104(b)(3). Id. Petitioner replies that “the limitation recites sufficient structure” to perform the specified function (i.e., “outputting a signal responsive to a physiological condition of a patient” (Ex. 1001, 10:39–42)). Pet. Reply 27 (citing Ex. 1040 ¶ 117). In the Sur-reply, Patent Owner contends that Petitioner has the burden on this issue. PO Sur-reply 26–27. We credit Dr. Bergeron’s testimony that a person of ordinary skill in the art “would understand that a ‘physiological sensor means’ is just a physiological sensor that provides signals to a processor for measuring physiological parameters.” Ex. 1040 ¶ 117 (cited at Pet. Reply 27). We find that the limitation includes sufficient structure to perform the claimed function, and thus, is not a means-plus-function limitation. See TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259–1260 (Fed. Cir. 2008) (the presumption that § 112 ¶ 6 applies is overcome if “the claim recites sufficient structure for performing the described functions in their entirety”)).” slip op. at 58

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person having ordinary skill in the art “would have been a person with at least a B.S. degree in electrical or biomedical engineering or a related field with at least two years’ experience designing patient monitoring systems,” wherein “[l]ess work experience may be compensated by a higher level of education, and vice versa.” Pet. 13 (citing Ex. 1003 ¶¶ 33–41); see Ex. 1040 ¶ 28. Patent Owner applies the level of ordinary skill in the art identified by Petitioner. PO Resp. 8 n.5 (citing Ex. 2011 ¶¶ 18–19). We adopt Petitioner’s assessment, which appears consistent with the level of skill reflected in the Specification and prior art.” slip op. at 12

  • ExcludeMotion to exclude, deniedDenied

    “G. Motion to Exclude Petitioner moves to exclude portions of Exhibits 2017 and 2022. MTE 1, 3, 5. We do not rely upon the identified portions of the exhibits and, as such, dismiss the Motion to Exclude as moot. III. CONCLUSION” slip op. at 62

  Patent outcomesUS RE47,244 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
• Sharkninja Operating LLC / Sharkninja Management LLC et al. v. Irobot CorporationRehearing granted
  PTAB · Nov 17, 2021 · IPR2021-00544 · APJ Terrence W Mcmillin · IPR · Rehearing

  Rehearing was granted and review instituted on all challenged claims and grounds after the Board found the ITC target date made Fintiv factor 2 neutral and Petitioner’s broadened stipulation favored institution.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “Institution stated, “[t]he evidentiary hearing in the ITC investigation is scheduled to begin January 5, 2022, and the final determination is due April 29, 2022.” DDI 9 (citing Ex. 2004, 5; emphasis added). Petitioner is correct that the statement did not correctly state the target date for the ITC’s final determination. According to the Adopted Procedural Schedule for the ITC Investigation, the “Final ID” is due April 29, 2022, and the “Target Date” is August 29, 2022. Ex. 2004, 5. We agree that the ITC’s target date for final determination is more appropriate for evaluating Fintiv factor 2, consistent with the Board’s prior decisions. See Request 2–3 (identifying numerous proceedings). Applying the August 29, 2022, date, we conclude that Fintiv factor 2 is neutral in this proceeding, because of the close proximity between the ITC’s target final determination and our expected final written decision based on the mailing date of this Decision.” slip op. at 9

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied discretionary otherDecided for petitioner

    “Institution stated, “[t]he evidentiary hearing in the ITC investigation is scheduled to begin January 5, 2022, and the final determination is due April 29, 2022.” DDI 9 (citing Ex. 2004, 5; emphasis added). Petitioner is correct that the statement did not correctly state the target date for the ITC’s final determination. According to the Adopted Procedural Schedule for the ITC Investigation, the “Final ID” is due April 29, 2022, and the “Target Date” is August 29, 2022. Ex. 2004, 5. We agree that the ITC’s target date for final determination is more appropriate for evaluating Fintiv factor 2, consistent with the Board’s prior decisions. See Request 2–3 (identifying numerous proceedings). Applying the August 29, 2022, date, we conclude that Fintiv factor 2 is neutral in this proceeding, because of the close proximity between the ITC’s target final determination and our expected final written decision based on the mailing date of this Decision.” slip op. at 9

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

    “Summary as to Claim 1 Petitioner has shown a reasonable likelihood of showing that claim 1 of the ’423 patent would have been obvious in view of the combined teachings of Jeon, Everett, and Abramson. 5. Claims 2–4, 6–10, 12–15, 18–23, 25, and 26 Petitioner also contends that claims 2–4, 6–10, 12–15, 18–23, 25, and 26 would have been obvious in view of a combination of the asserted references. See Pet. 26–80. As noted previously, Patent Owner does not address the merits of any portion of the Petitioner’s obviousness showing. See generally Prelim. Resp. Thus, at this stage, Petitioner’s obviousness showing as to claims 2–4, 6–10, 12–15, 18–23, 25, and 26 is undisputed. We have determined that there is a reasonable likelihood that the Petitioner will prevail with respect to at least one of the claims challenged in the Petition pursuant to 35 U.S.C. § 314 and that inter partes review should be instituted. Accordingly, we institute as to all the challenged claims and all the challenges raised in the Petition. SAS Institute Inc. v. Iancu, 138 S.Ct. 1348, 1358 (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.”). III. CONCLUSION Petitioner has persuaded us that rehearing is appropriate and we grant the Request for Rehearing. After reconsidering our discretionary denial of the Petition, we determine that discretionary denial is inappropriate. And, we determine that Petitioner has demonstrated a reasonable likelihood of showing at least one of the claims challenged in the Petition would have been obvious. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Request for Rehearing is granted; FURTHER ORDERED that an inter partes review is instituted on all challenged claims under all challenged grounds; and FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter partes review of the ʼ423 patent is hereby instituted commencing on the entry date of this Decision, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial.” slip op. at 29

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

    “With regard to combining the relevant teachings of Jeon and Everett relating to this limitation, the Petition states: It would have been obvious to combine this well-known, reduced base station approach velocity with [ ]Jeon . . . Doing so is nothing more than substituting a known feature (e.g., Everett’s reduced base station approach velocity) in an existing system ([ ]Jeon’s robot cleaner) according to known methods (e.g., function of stand-off distance) to achieve a predictable result (avoiding collision with and/or increased maneuverability for accurate alignment with the base station). Id.; KSR, 550 U.S. at 416-418. Selecting a reduced base station approach velocity is a known, obvious, trivial selection from a limited number of options (increasing, decreasing, or maintaining velocity). Likhachev, ¶ 82. Given the benefits of reducing the velocity (e.g., avoiding collision and/or increased maneuverability), to the extent not already understood from [ ]Jeon and the knowledge of a skilled artisan, a skilled artisan would have found it obvious to try reducing the base station approach velocity of [ ]Jeon’s robot cleaner as taught by Everett. Id.; KSR, 550 U.S. at 421. Pet. 19–20. At least at this stage of the proceedings, we determine that Petitioner provides sufficient rationale for combining the relied upon teachings of Jeon and Everett. We determine that, for purposes of institution, Petitioner has shown sufficiently that the cited art teaches this limitation.” slip op. at 24

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,884,423
• Sharkninja Operating LLC / Sharkninja Management LLC et al. v. Irobot CorporationAll claims unpatentable
  PTAB · Oct 21, 2021 · IPR2020-00863 · APJ Terrence W Mcmillin · IPR · Final written decision

  Claims 1, 2, 4–12, 14, and 15 are unpatentable over the cited prior art, including Lang alone under §102 and the specified combinations under §103.

  RulingsFinal written decision

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

    “We agree with Patent Owner that the plain meaning of the claim language requires that the “core” rotate but we discern nothing in the plain meaning of the claim language that requires that all constituent parts of the “end mounting features” must rotate. Stated differently, we determine that the “core” limitations can be met even if some of the parts of the “end mounting features” do not rotate.” slip op. at 9

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

    “We determine that the preamble of claim 1 is not limiting because a structurally complete invention is recited in the body of claim 1 and the preamble only states the purpose or intended use of the invention. Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997) (“[W]here 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, the preamble is not a claim limitation.”). However, we also agree with Petitioner that Lang discloses a floor cleaner, i.e., a vacuum cleaner.” slip op. at 23

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “D. Level of Ordinary Skill in the Art Petitioner identifies the appropriate level of skill in the art as “someone with at least a four-year degree in mechanical engineering, or closely related field, and at least one year of experience in the design and implementation of vacuum cleaning systems.” Pet. 8 (citing Ex. 1003 (Fester Decl.) ¶ 30). Patent Owner does not provide an assessment of the appropriate skill level. See generally PO Resp. For purposes of this Decision, we adopt Petitioner’s assessment, which is undisputed and appears consistent with the level of skill reflected in the Specification and prior art. E. Claims 1, 4–7, 9–11, 14, 15: Consideration of Alleged Anticipation by” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Id. at 58–59. We agree with Petitioner that Brundula provides an express teaching that its brushroll would be suitable for use in a vacuum cleaner and that this express teaching supports finding a motivation to combine the relevant teachings of these references. See Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358, 1364–65 (Fed. Cir. 2008) (noting that the teaching-suggestion-motivation test, flexibly applied, remains an important tool in an obviousness analysis).” slip op. at 54

  Patent outcomesUS 8,418,303 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Markman · KSR · Graham
  Patents in suitUS 8,418,303
• Sharkninja Operating LLC / Sharkninja Management LLC et al. v. Irobot CorporationSome claims unpatentable
  PTAB · Oct 6, 2021 · IPR2020-00735 · APJ Jason W Melvin · IPR · Final written decision

  Claims 1, 2, 4–10, 12, and 14–18 are unpatentable as obvious; claim 13 was not shown unpatentable because the prior art did not meet its schedule limitation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner proposes that a person of ordinary skill “would have had at least a four-year degree in electrical engineering, mechanical engineering, or a closely related field and have at least one year of experience in the design and implementation of robotics and embedded systems.” Pet. 7 (citing Ex. 1004 ¶¶ 46–47). Patent Owner does not dispute this definition of a person of ordinary skill. See generally PO Resp. We adopt Petitioner’s proposed level of ordinary skill as it appears to be consistent with the level of skill reflected by the specification and in the asserted prior art references.” slip op. at 5

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “We do not agree with Patent Owner. As Petitioner points out, Toshiba’s device includes the ability to report errors to the user. Pet. 40–42 (citing Ex. 1007 ¶ 67); Pet. Reply 10–11. The combination Petitioner asserts takes Ruffner’s teachings and applies them to Toshiba’s device in a way to enable the tangle-indicating functionality. A skilled artisan would understand from Ruffner’s teachings that a combination of sensors is required to indicate a tangled work module—as discussed above, Ruffner expressly discusses that arrangement. Ex. 1009 ¶ 79. And Petitioner asserted allowing it to use sensors to detect the brush’s condition, use software to analyze the sensor feedback, and send an error report about the brush to a user through a proper communication channel.” Pet. 42; accord Pet. Reply 11; Ex. 1004 ¶¶ 116–119. Thus, we do not agree that the combined device would be unable to implement the desired functionality.” slip op. at 11

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

    “We agree with Patent Owner. Although Petitioner identifies instances in the specification where a user defines a schedule, and Petitioner argues “[t]here is no suggestion in the specification that these embodiments are disavowed,” we do not agree that indicates we should necessarily construe the claim language to include all embodiments. Rather, with “generating,” claim 13 requires something beyond merely accepting input from the user. We agree that the claim is limited to the device producing a schedule based on prior cleaning operations initiated by a user. We do not view the plain language of claim 13 as consistent with a user entering a schedule into the device. Petitioner does not contend that the prior art discloses claim 13’s limitations under Patent Owner’s view of the claim. See Pet. Reply 12–15. Accordingly, Petitioner has not proven that claim 13 would have been obvious over Toshiba and Ruffner.” slip op. at 14

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “We agree with Petitioner that Abramson discloses or suggests cleaning at a power between the minimum and maximum. When Abramson discusses brush speed, it gives two speeds as examples (Ex. 1010 ¶ 79) but that does not limit Abramson’s approach to just those two particular speeds. Reply 17–18. Further, Abramson discloses varying more than just the brush speed—it also discloses varying cleaning power, cleaning mode, and the robot’s speed. Ex. 1010 ¶ 123; Pet. Reply 16. Thus, varying those parameters would result in power levels between the minimum and maximum. Having considered all of the parties’ contentions and evidence, we are persuaded that Petitioner has proven that claim 2 would have been obvious over Toshiba, Ruffner, and Abramson.” slip op. at 16

  Patent outcomesUS 10,045,676 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 10,045,676
• Google LLC v. Express Mobile, Inc.Institution denied
  PTAB · Oct 4, 2021 · IPR2021-00700 · APJ Amanda F Wieker · IPR · Institution

  The Board denied institution because Google did not show a reasonable likelihood of proving claim 1 obvious over Jammes and Lindholm.

  RulingsInstitution decision

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

    “review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314; see also 37 C.F.R § 42.4(a) (“The Board institutes the trial on behalf of the Director.”).” slip op. at 2

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Having considered the parties’ arguments and evidence, we determine that Petitioner has not met its burden of showing that Jammes’ product relationship information are settings, or attributes of an object available for selection, that describe elements on a website. We discern three deficiencies in Petitioner’s showing. First, Petitioner has not demonstrated sufficiently that Jammes’ product relationship information are “settings” or “attributes of an object.” This relationship information reflects inventory organization information, akin to areas of a back storeroom that are organized by product type. See Ex. 1007, Fig. 7D (depicting folders identifying areas of a store organized by product type, e.g., “Automotive” is organized separately from “Computer,” which is organized separately from “Clothing”); Prelim. Resp. 26 (“Jammes merely shows the product relationships in a folder hierarchy.”). Petitioner has not shown how inventory organization information is an “attribute of an object” like, e.g., font style as disclosed in the ’397 patent. See Ex. 1001, Fig. 37.” slip op. at 15

  • Prior constructionPrior construction adoptedDecided for petitioner

    “Patent Owner states only that “[d]istrict courts have repeatedly construed ‘settings’ as ‘an attribute of an object available for selection.’ Petitioner does not dispute this construction, and in fact purports to analyze the asserted references in view of this construction.” Prelim. Resp. 25 (citing Ex. 2016, 10; Ex. 2017, 13; Ex. 2018, 6). Patent Owner does not dispute this construction of the term. Id. In accordance with the parties’ briefing, we apply the previous district courts’ construction of “settings” as “an attribute of an object available for selection.” Pet. 35–36; Prelim. Resp. 25. Based on our analysis of the issues in dispute at this stage of the proceeding, we agree that no further claim term requires express construction. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Level of Ordinary Skill in the Art Petitioner identifies the appropriate level of skill in the art as that possessed by a person having “a bachelor’s degree in electrical engineering, computer science, or the equivalent thereof, and at least two years of experience with programming relating to websites.” Pet. 16 (citing Ex. 1002 ¶¶ 15–16). Alternatively, “[m]ore education can supplement practical experience, and vice-versa.” Id. Patent Owner identifies the appropriate level of skill in the art as that possessed by a person having “a bachelor’s or graduate degree in computer science, mathematics, engineering, or a similar discipline together with knowledge of software development and web design, together with approximately two or three years of experience,” where education and experience “are on a sliding scale relative to each other.” Prelim. Resp. 10– 11 (citing Ex. 2001 ¶ 19). According to Patent Owner, “[t]he analysis herein is the same for both Petitioner’s definition of a [person of ordinary skill in the art] and that of Patent Owner’s.” Id. at 11. For purposes of this Decision, we adopt Petitioner’s assessment as set forth above, which appears consistent with the level of skill reflected in the Specification and prior art.” slip op. at 9

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,546,397
• Sharkninja Operating LLC / Sharkninja Management LLC et al. v. Irobot CorporationSome claims unpatentable
  PTAB · Oct 4, 2021 · IPR2020-00734 · APJ Jason W Melvin · IPR · Final written decision

  Claims 8, 10, and 13 are unpatentable as obvious; claims 14–16 were not shown unpatentable because the asserted combinations did not establish the claimed concurrent mapping and cleaning.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner submits that a person of ordinary skill in the art “would have at least a four-year degree in mechanical engineering, electrical engineering, or a closely related field and at least one year of experience in the design and implementation of robotics and embedded systems.” Pet. 4. Patent Owner does not contest that definition, and we apply it in our analysis, as it appears consistent with the prior art and challenged patent.” slip op. at 6

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

    “Reply 9–12. Further, Petitioner takes issue with Patent Owner’s characterizations asserting that claim 10 would read on “navigating based solely on features such as physical attributes of one or more points such as color/size, or information encoded in the points, even when there is no consideration of the robot’s location relative to the points.” See Pet. Reply 10–11 (quoting PO Resp. 9–10). We agree that Patent Owner’s statement stretches our view of the claim scope. The claim language states that the device must navigate “based on a location of the . . . device relative to the points.” Ex. 1001, 20:16–19. That language requires location-based navigation and our Institution Decision did not hold otherwise. Rather, when we stated that the claim requires using a captured image “to determine the robot’s position,” that implied the claimed requirement that the “position” is relative to the captured points (and thus relative to the room). Inst. 11–12;” slip op. at 7

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

    “begin cleaning as soon as the claimed command is received. We are not persuaded that the claim language and specification are consistent with Patent Owner’s construction. The claim language requires that the device “initiate the area rug cleaning operation” “responsive to receiving data indicative of a user-selected command.” We view the “responsive to” language as sufficiently ambiguous as to intervening steps such that we should look to the specification for guidance. The specification describes that a user may select “area rug” mode, after which the remote indicates “AREA RUG MODE ACTIVE” and “ROBOT WILL CLEAN THE RUG ONLY,” and cleaning does not start until the user places the robot appropriately and presses “CLEAN.” Ex. 1001, Figs. 21A, 21B, 17:63–18:10. Because the claim language requires data indicative of a “command to initiate an area rug cleaning operation,” some aspect of the command must be specific to area-rug cleaning. Pressing the “CLEAN” button does not satisfy that requirement, as nothing about the command itself indicates the claimed operation.10 Patent Owner contends that “what command is going to be sent” “depends on what mode you’re in” (Tr. 25:13–19), but we find no support for that in the specification. Indeed, Patent Owner agrees that the specification does not go into such detail but submits that we “can infer that the command and the data that’s sent associated with that command is different.” Tr. 27:16–28:2. We do not agree and determine that, instead, the specification is consistent with a command to initiate area-rug cleaning that indicates to the robot the desired mode but does not immediately start cleaning. That is, the claimed command is described as selecting an “AREA RUG” mode, which does not 10 In this regard, Patent Owner’s proposed construction would suffer from a similar deficiency as Petitioner’s mapping to Toshiba’s priority mode discussed below. See infra at 10. In that mapping, Toshiba’s device would clean an area rug if it happens to lie in a map grid selected for cleaning. Similarly, the “CLEAN” button would initiate area-rug cleaning if the “AREA RUG” mode happens to have been selected prior to that. We think the claim language requires more, in both instances. cause the robot to begin operation; a later-issued generic “CLEAN” command causes the robot to begin operation. Ex. 1001, 17:63–18:10.” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “mapping first, then using that map to clean, we consider the claim language to the contrary. The claim does not use any punctuation that would suggest “to perform the one or more cleaning operations” modifies anything other than the preceding phrase—“navigating the autonomous robotic cleaning device about the home.” And, as Patent Owner identifies (see Tr. 33:8–34:10), the specification supports a claim to mapping while cleaning. It states that the vehicle may “improve its cleaning function . . . to roughly mark areas . . . where large obstacles exist, so that those areas can potentially be avoided in future runs.” Ex. 1001, 11:36–41. That describes mapping during cleaning because marking areas is a form of mapping and “in future runs” shows that the mapping was performed during a “run,” or cleaning operation. Another passage relates to Figure 6, which depicts how the “vehicle uses a number of signals for headings to move from room to room.” Id. at 12:17–19, Fig. 6. The specification addresses when the vehicle’s “power level drops below a predetermined level, requiring its return to a base charging station 622.” Id. at 12:20–23. The returning vehicle continues cleaning during the return. See id. at 12:54–58 (“Upon detecting the unique marker associated with a particular working space, the autonomous vehicle may alter its cleaning function.”). The returning vehicle “detects and stores information about each coded signal that it detects along its route.” Id. at 13:23–26. By doing so, the “vehicle can create a map.” Id. at 13:26–29. Therefore, “[a]fter charging, the autonomous vehicle can return to the room it was working in prior to returning to its base” using the map. Id. at 13:29– 32. Based on the specification passages, we conclude the claim language, which has ordinary meaning requiring cleaning while mapping, is consistent with the specification. Toshiba’s sequential process is not the same as the concurrent process recited by claim 14. Nor does Petitioner account for the differences. See Pet. 57–58; accord Pet. Reply 21 (arguing that Toshiba discloses claim 14’s additional limitations only under Petitioner’s construction). Because we do not agree with Petitioner’s claim construction, we conclude that Petitioner has not proven claim 14 would have been obvious.” slip op. at 15

  Patent outcomesUS 9,921,586 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 9,921,586

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.