- Snap Inc. v. Sanderling Management Ltd.All claims unpatentablePTAB · Oct 31, 2022 · IPR2021-00778 · APJ Richard H Marschall · IPR · Final written decision
Claims 1–12 are unpatentable: claims 1, 2, and 4–12 as obvious over Hogeg, and claim 3 as obvious over Hogeg and Arujunan.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends, with accompanying declaration testimony, that a person having ordinary skill in the art “at the time of the alleged invention would have had at least a bachelor’s degree, or the equivalent, in electrical engineering, computer science, or a related field, and 2–3 years of experience in research, design, or development of mobile imaging systems and related hardware, software, and firmware, or equivalent experience.” Pet. 21. According to Petitioner, “[a] person with less education but more relevant practical experience, or more education and less experience, may also meet this standard.” Id. (citing Parulski Decl. ¶¶ 173–174). Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art. PO Resp. 8. We find Petitioner’s proposal consistent with the level of skill reflected in the ’412 patent and the prior art of record. See GPAC Inc., 57 F.3d at 1579. We apply Petitioner’s proffered level of ordinary skill in the art in this Decision.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that the patentee acted as his own lexicographer with the passage from column 6 discussed by the parties. Indeed, the sentence at issue begins with the exact same term—“distribution rule”—and continues by explaining what that term “is.” See Ex. 1001, 6:3–4 (“A distribution rule is a rule used in determining how to target a group of end-users . . . .” (emphasis added)); see also Ex. 1001, code (57) (the Abstract, providing that “[a] distribution rule is used to target a group of end users . . . ”). As Patent Owner persuasively argues, this language expresses an intent to define the “distribution rule” limitation. See PO Sur-reply 6 (citing Sinorgchem Co., Shandong v. Int’l Trade Comm’n, 511 F.3d 1132, 1136 (Fed. Cir. 2007) (stating that “the word ‘is,’ again a term used here in the specification, may ‘signify that a patentee is serving as its own lexicographer’”); see also Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016) (“To act as a lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ and ‘clearly express an intent to redefine the term.’” (quoting Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). Further, we disagree with Petitioner’s assertion that the definition should include the rest of the passage in column 6 (i.e., the language from “for instance” to the end of the sentence). See Pet. Reply 4. By beginning with “for instance,” the express language of that portion of the sentence makes clear that it merely provides examples of “rule[s]” that fall within the definition previously provided in the sentence, as acknowledged by Petitioner and Mr. Parulski. Cf. id. (“The language following that clipped by [Patent Owner] (‘for instance . . . ’) is what provides ‘distribution rules’ examples.”); Parulski Reply Decl. ¶ 22 (“The language following that identified by [Patent Owner] (beginning with ‘for instance, a rule . . . ’) provides examples of what a ‘distribution rule’ may be.”).6 For these reasons, we construe “distribution rule” in claim 1 in the manner proposed” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“said network, a Global Positioning System (GPS) location indication from each of a plurality of mobile devices” to mean “an indication, determined by a Global Positioning System (GPS), for the location of each of a plurality of mobile devices at the time of distribution,” as Patent Owner argues. See PO Resp. 13 (emphasis added). Patent Owner’s construction requires receiving a GPS location of a plurality of devices at a specific time—at the time of distribution. This attempt to read in a temporal limitation lacks support for several reasons. First, and most importantly, the claim limitation at issue does not suggest any temporal limitation tied to the generation or receipt of GPS location indications. Instead, the claim requires receiving a GPS “location indication from each of a plurality of mobile devices” without addressing when each device acquires the GPS location indication in any way. Ex. 1001, 23:15–17. Further, the limitation merely requires receiving location indications “from” the devices, not “of” the devices as Patent Owner proposes in its construction. See id. Patent Owner does not adequately address or support this second deviation from the claim language in its proposal. See PO Resp. 11–13. Second, none of the other language in the claim addresses when the mobile devices acquire a GPS location indication. Patent Owner relies on later claim language in support of its construction that requires forwarding the processing function to a “mobile device having a GPS location indication which matches said geographic location,” but that limitation does not address when the device acquires the GPS location indication. See Ex. 1001, 23:27–29. The “device having a GPS location indication” refers back to one of the plurality of devices providing a GPS location indication without further modifying that limitation, and the “geographic location” refers back to a “distribution rule defining a geographic location,” which does not refer to when a device acquires a GPS location indication. See id. at 23:13–17, 23:27–29. Third, the specification of the ’412 patent does not require reading the limitation as Patent Owner proposes. As Petitioner points out, the ’412 patent depicts several steps in its process and suggests that the devices may acquire GPS location indications at the time a user captures images, which occurs prior to any time of distribution. See Pet. Reply 6–7 (referring to Ex. 1001, Fig. 7) (citing Parulski Reply Decl. ¶¶ 36–38). This disclosure conflicts with Patent Owner’s construction, and shows that the specification lacks any clear disclosure tying the device GPS location indication to the time of distribution. Patent Owner does not respond to this argument in its Sur-reply. See PO Sur-reply 6–8.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“obviousness] involves the weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1361 (Fed. Cir. 2017). Above, based on the full record before us, we provide our factual findings regarding (1) the level of ordinary skill in the art, (2) the scope and content of the prior art, (3) any differences between the claimed subject matter and the prior art; and (4) objective indicia of nonobviousness. In particular, we find that (1) Petitioner’s proposed level of ordinary skill in the art is consistent with the art of record; (2) Petitioner establishes sufficiently that Hogeg discloses or renders obvious all the limitations of claim 1 for the reasons provided by Petitioner; and (3) the parties do not introduce or rely upon any objective indicia of nonobviousness. Weighing these underlying factual determinations, Petitioner has shown, by a preponderance of the evidence, that claim 1 of the ’412 patent is unpatentable as obvious over Hogeg.” slip op. at 51
Patent outcomesUS 9,355,412 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,355,412 - Agrofresh Solutions, Inc. v. Lytone Enterprise, Inc.All claims unpatentablePTAB · Jul 25, 2022 · IPR2021-00451 · APJ Devon Zastrow Newman · IPR · Final written decision
Claims 3 and 11 are unpatentable as obvious over Hisano and Daly, and over Daly and Hisano, because the skilled artisan would have been motivated to combine the teachings with a reasonable expectation of success.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“definition focuses on chemistry and materials science without a specific focus to the application of that knowledge to the subject matter of the invention, while Patent Owner’s proposal permits the artisan’s degree to be in horticulture or plant science, requires at least 2–4 years of experience in the area of postharvest biology and technology, and specifically requires “working with encapsulated gaseous agents such as the 1-MCP encapsulation complex.” PO Resp. 14. It is not clear on the record before us nor does Patent Owner’s expert explain why the additional, specific expertise in postharvest biology and technology would have been required to understand the teachings of the ’185 patent in a manner necessary to apply them. Moreover, the proposed additional skill level does not appear to be necessary in light of the skill level reflected by the asserted prior art. See 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)). For instance, Hisano measures preservation visually, by ascertaining whether the flowers looked fresh or appeared to have been harmed by effects of the chemicals added, and whether the water the flowers were stored in was cloudy. Ex. 1004 ¶ 24. This observation does not require specific expertise in postharvest biology and technology. 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, although we agree with Patent Owner that a degree in plant physiology, horticulture, plant science or the like along with work experience, or a master’s degree in exchange for such work experience, in the area of controlled release of compounds would provide sufficient expertise to understand the teachings of the ’185 patent in a manner necessary to apply them. Accordingly, we adopt the following definition of the skilled artisan for purposes of this Decision: a bachelor’s degree in chemistry, chemical engineering, materials science, plant physiology, horticulture, plant science or the like, and 1–2 years of work experience, or a master’s degree in exchange for such work experience, in the area of controlled release of compounds, such as those used to inhibit ethylene response in plants.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededDecided for petitioner
“Neither party advances any claim terms for construction. Pet. 20; PO Resp. 15. We find that no express construction is necessary for purposes of rendering this Decision and apply the plain meaning of all terms. See 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)).” slip op. at 13
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“It is not necessary for an expert’s experience or expertise to precisely match the art at issue. SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010). However, one offering expert testimony must at least have ordinary skill in the art to provide relevant and reliable testimony that is helpful to the factfinder. Kyocera Senco Indus. Tools, Inc. v. ITC, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022). “The Board has broad discretion to assign weight to be accorded expert testimony.” Consolidated Trial Practice Guide 35 (available at https://www.uspto.gov/TrialPracticeGuide Consolidated).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“We find that the ordinarily skilled artisan would have looked at Hisano as an analogous reference and would have been motivated to try scaling up its smaller-scale solution of effervescent tablets for delivery on a larger scale than single flower vases. We further find that the artisan would not have been deterred by Hisano’s lack of embodiments including gas agents and disclosing local use only that would have prevented use of 1- MCP directly with plants. Ex. 2013 ¶¶ 52–54. In particular, because Daly suggested the molecularly encapsulated 1-MCP could be made in powder form (Ex. 1005, 11:1–11), which is the form Petitioner suggested for use in the proposed obviousness combination (e.g., Pet 36–37), we are not persuaded by Patent Owner’s arguments regarding concerns the skilled artisan would have had about working with 1-MCP gas that is released into the atmosphere where the atmosphere becomes the treatment medium as opposed to a liquid medium. agent, along with Daly’s teachings that 1-MCP is a known substitute for STS without STS’s toxic waste byproduct would have motivated the artisan to explore use of 1-MCP. Daly’s teaching of using a cyclodextrin cage-stabilized and powdered version of 1-MCP to inhibit ethylene binding in plants would have motivated the skilled artisan to try this stabilized version in Hisano’s effervescent tablet preparation because of the benefits of effervescent ingredients for dissolution and dispersion, to treat plants on a larger scale. See Ex. 1005 11:1–20; Ex. 1006 ¶¶ 29, 110–115; Ex. 1035 ¶¶ 11–18. Hisano instructs the artisan about optimization by creating tablets with a proper “effervescence component: freshness preserving component to a weight ratio of between 6.5:3.5 and 5.0:5.0 to create a large, compact tablet agent that can secure some degree of the freshness preserving component” while also stabilizing the tablet for transportation and adjusting the ratios of components to affect the “target quality, effervescence effects, and dissolution time, etc. of the final product.” Ex. 1004 ¶¶ 12, 14. These additional teachings would have led the skilled artisan to understand that an effervescent tablet dosage made with cyclodextrin-stabilized 1-MCP could be made for larger scale production and use. In particular, we find that the artisan would have been motivated to combine the teachings of Hisano and Daly because of 1) Daly’s teaching that STS is problematic for use in inhibiting ethylene in plants due to difficulties in silver waste byproduct disposal, leading to “a great desire among postharvest physiologists to find alternatives to STS” (Ex. 1005, 2:42–64); 2) Daly’s teachings that cyclopropene and its derivatives, including 1-MCP, are “commercially acceptable replacement[s] for STS”) (id. at 1005) and that powder complexes provided advantages over 3) Hisano’s teaching that an ethylene suppressing agent could be delivered via an effervescent tablet, which when dissolved in water, creates “generated carbonic acid gas [that] will promote assimilation action, which will be effective for cultivating, and preserving the freshness of, the cut flowers (plants).” Ex. 1004 ¶ 25; see also Ex. 1006 ¶¶ 113–115 (opining that the skilled artisan would have understood encapsulated 1-MCP, a powder-based form, to be one of a finite number of safer substitutes for STS that could be incorporated into an effervescent tablet using methods known to the skilled artisan at the time); Ex. 1013 at 9 (identifying 1-MCP as a newly discovered “ethylene inhibitor [that acts] as a binding site competitor and is very promising as a postharvest treatment for both potted plants and fresh cut flowers [giving] ethylene protection equal to that obtained from STS, but without silver” and noting that a “company plans to sell the product in a powder form that will release MCP gas when mixed with water”). The art suggested finding substitutes for STS, meaning that the skilled artisan would have looked for likely substitutes such as this stable form of 1-MCP for use in various delivery methods. See, e.g., In re Kerkhoven, 626 F.2d 846, 850 (“It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition which is to be used for the very same purpose.”).” slip op. at 25
Patent outcomesUS 6,897,185 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,897,185 - Platform Science, Inc. v. Omnitracs, LLCAll claims unpatentablePTAB · Jun 2, 2022 · IPR2021-00187 · APJ Frederick C Laney · IPR · Final written decision
Claims 1–22 are unpatentable as obvious over Moses; the Board did not reach the alternative Levesque ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Petitioner, supported by Mr. Andrews’s testimony, proposes that a person of ordinary skill in the art at the time of the invention “would have had at least a Bachelor of Science degree (or equivalent) in . . . electrical engineering, computer engineering, computer science, or a related technical field, and at least 2–3 years of experience in the field of vehicle telematics systems.” Pet. 9–10 (citing Ex. 1003 ¶¶ 25–27). Patent Owner “does not dispute Petitioner’s offered level of ordinary skill in the art” for purposes of this proceeding. PO Resp. 8. We find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the ’335 patent and the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to 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 neededOther
“construction standard that would be used to construe the claims in a civil action under 35 U.S.C. § 282(b). See 37 C.F.R. § 42.100(b) (2020). The claim construction standard includes construing claims in accordance with the ordinary and customary meaning of such claims as understood by one of ordinary skill in the art at the time of the invention. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). In construing claims in accordance with their ordinary and customary meaning, we take into account the specification and prosecution history. Phillips, 415 F.3d at 1315–17. However, only terms that are in controversy need to be expressly construed and only to the extent necessary to resolve the controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner contends that the terms in the Challenged Claims are properly understood to have their ordinary and customary meaning. Pet. 2. Patent Owner does not dispute this contention. See generally PO Resp. Therefore, because no controversy regarding claim construction exits, it is not necessary for us to construe expressly any claim term.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“attempts to map to the CVP System (see PO Resp. 56–59)—Petitioner has established that Moses discloses or suggests the subject matter of those claims. The proposed combinations are not based on hindsight reconstruction; rather, they are straightforward and logical. Moses indisputably discloses a response management system with automated rule-based alert notifications and response deployment capabilities. The only arguable differences Patent Owner alleges are whether Moses discloses storing information about something happening/occurrence versus more general information and whether Moses discloses providing responses that recommend a particular action be taken versus responses that are merely informational. We find Petitioner’s evidence from Moses to be particularly strong that a skilled artisan would have known to store information about occurrences and provide responses including recommended actions. Thus, for all the reasons discussed above (supra § III.B.1) and here, we give Petitioner’s evidence of obviousness substantial weight. Additionally, we disagree with most of Patent Owner’s arguments in response and we do not give Patent Owner’s evidence of objective indicia of nonobviousness substantial weight for the reasons discussed above (supra § III.C). But, even if we were to have found that Patent Owner established a nexus, given its tenuous connection to the only difference Patent Owner alleges to exist between the systems disclosed by the prior art and the claimed invention, we find that the evidentiary weight favoring obviousness significantly outweighs the most probative weight that could be given to the objective evidence presented. We also find that the balance weighs strongly in Petitioner’s favor regarding claims 2–7, 9–16, and 18–22 for the same reasons discussed above and additionally because Patent Owner has not established that the CVP System practices any of these claims or that there is a nexus between the objective indicia of nonobviousness and any of these claims. Accordingly, on balance, considering the complete record before us, Petitioner has established, by a preponderance of the evidence, that claims 1–22 of the ’335 patent would have been obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 52
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“As stated in Fox Factory, “presuming nexus is appropriate when the patentee shows that the asserted objective evidence is tied to a specific product and that product embodies the claimed features, and is coextensive with them.” Fox Factory, 944 F.3d at 1373 (quotations omitted). Patent Owner does not assert that the CVP System is entitled to a presumption of nexus. See generally PO Resp. 55–61. Furthermore, Patent Owner does not provide any evidence or argument to even suggest that the CVP System and the claimed invention are coextensive. Id. Exhibit 2015 evidences that the CVP System includes a myriad of features that would allegedly provide important benefits to its customers. Therefore, Patent Owner is not entitled to a presumption of nexus because, even presuming the CVP System incorporates the patented invention, it cannot be disputed that the claimed invention is only one of many components included in the CVP System. See generally Ex. 2015. Of course, our nexus inquiry does not end there because Patent Owner is still afforded an opportunity to prove nexus by showing that the alleged commercial success achieved with the CVP System is in some way a direct result of the unique characteristics of the claimed invention. But on this front, Patent Owner again fails to provide any foundational basis to establish a link between the claimed invention and the evidence of commercial success. Instead, Patent Owner simply states, “[b]ecause the [CVP System] embodies all the limitations of the independent claims of the ’335 patent, sufficient nexus exists between [Patent Owner’s] commercial success and the claims.” PO Resp. 55. And after Petitioner pointed out that Patent Owner had failed to establish any specific link between the claimed invention and commercial success evidence (Pet. Reply 25–26), Patent Owner responded as follows: “It is not necessary, however, that the patented invention be solely responsible for the commercial success, in order for this factor to be given weight appropriate to the evidence, along with other pertinent factors.” Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1273 (Fed. Cir. 1991); see also Oren Techs., LLC v. Proppant Express Invs. LLC, No. 2019-1778, 2021 WL 3120819, at *7 (Fed. Cir. July 23, 2021). As [Patent Owner] explained, [Petitioner’s CVP System] is commercially successful at least in part due to the advertised remote vehicle monitoring functionality. See Exs. 2016-2023. This is more than adequate to establish commercial success. Oren Techs, 2021 WL 3120819, at *7. PO Sur-reply 25–26. Patent Owner has not persuasively shown by a preponderance of the” slip op. at 47
Patent outcomesUS 9,147,335 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,147,335 - Incyte Corporation v. Concert Pharmaceuticals, Inc.No claims unpatentablePTAB · May 11, 2022 · PGR2021-00006 · APJ Devon Zastrow Newman · PGR · Final written decision
The Board held claims 1–7 and 9–21 not shown unpatentable over either obviousness ground because Petitioner did not establish motivation to select Compound (I) from Silverman’s genus.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedOther
“It is not necessary for an expert’s experience or expertise to precisely match the art at issue. SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010). However, one offering expert testimony must at least have ordinary skill in the art to provide relevant and reliable testimony that is helpful to the factfinder. Kyocera Senco Indus. Tools, Inc. v. ITC, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022). “The Board has broad discretion to assign weight to be accorded expert testimony.” Consolidated Trial Practice Guide 35 (available at https://www.uspto.gov/sites/default/files/documents/ tpgnov.pdf?MURL=). Dr. Patterson has a Ph.D. in Chemistry and over 30 years of experience in drug design, drug administration, evaluation of drug effectiveness, and participated in drug design for over 20 years. Ex. 1007 ¶¶ 4–10; Ex. 1008, 1–2. He is author or co-author on over eight peer-reviewed journal articles involving medicinal chemistry. Ex. 1007 ¶ 5. We find this level of skill to meet the qualifications for the level of skill in the art under the training and experience portion of the definition we have adopted for purposes of this opinion (see § II.B.), reproduced below: a Ph.D. in chemistry, pharmaceutical sciences, molecular biology, or a similar field, or an M.D. with similar background. A POSA would also have had at least several years of experience with drug design, drug development, clinical trials, or access to other individuals with that knowledge and experience. Likewise, a POSA would have had knowledge and experience in treating hair loss disorders, or access to a person with that knowledge and experience. We note that Dr. Patterson himself also proposes this definition. Id. ¶ 102. However, Dr. Patterson does not have “knowledge and experience in treating hair loss disorders” and did not opine that, in regards to his testimony, he had access to a person with that knowledge and experience, as is proposed in the definition. See generally, Ex. 1007. Accordingly, we find Dr. Patterson qualified to opine on the level of ordinary skill with regard to issues of drug design, evaluation of effectiveness, and drug administration, but we find he is not adequately qualified to opine on the level of ordinary skill with regard to issues of treating hair loss disorders.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner proposes the same definition as Petitioner, but adds that the skilled artisan “would also have had experience in JAK inhibition, deuteration, and AA [alopecia areata] formulations, or access to a person with that knowledge and experience.” Resp. 15 (citing Ex. 2059 ¶ 14). Patent Owner’s expert Dr. Ko critiques Petitioner’s proposed definition as “incomplete, because it lacks any requirement for experience, or access to individuals with experience, in JAK inhibition, deuteration, and AA formulations.” Ex. 2059 ¶ 16. However, neither Dr. Ko nor Patent Owner explains what difference this additional direct experience would have provided to an artisan with the skill level proposed by Petitioner, particularly when Petitioner’s definition includes “experience in treating hair loss disorders,” and for which the record contains evidence that existing JAK inhibitors such as ruxolitinib had been identified as causing reversal of hair loss caused by AA. Ex. 1003, 1043. Accordingly, we adopt Petitioner’s proposed definition as consistent with the level of skill apparent in the cited prior art. In any event, as Patent Owner does not explain why its alternative definition would have any bearing on the outcome of the present case, and as we discern no appreciable difference in the parties’ definitions, we note our findings and conclusions would be the same regardless of which definition were adopted. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. 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 (Fed. Cir. 1985)).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We construe claims using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100. Therefore, we construe the challenged claims under the framework set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc). Under this framework, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art (“POSA”), at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id. Only those terms that are in controversy need be construed and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 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)). We have considered Petitioner’s claim construction proposals (see Pet. 21–23), which are uncontested (see generally Resp., not addressing construction), and find that it is not necessary to expressly construe any claim term for purposes of rendering this Decision.” slip op. at 13
- Novelty / Anticipation (§102) › Prior-art status of a reference › Applicant-admitted prior artReference not prior artDecided for patent owner
“Section 102(b)(1) provides two exceptions to § 102(a)(1) for disclosures made within one year of the effective filing date. Specifically, 35 U.S.C. § 102(b)(1) provides that a disclosure made one year or less before the effective filing date of a claimed invention shall not be prior art under 35 U.S.C. § 102(a)(1) with respect to the claimed invention if: (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. 35 U.S.C. § 102(b)(1).” slip op. at 16
Patent outcomesUS 10,561,659 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,561,659 - Interactive Communications International, Inc. v. Blackhawk Network, Inc.All claims unpatentablePTAB · Mar 15, 2022 · PGR2020-00084 · APJ Frederick C Laney · PGR · Final written decision
Claims 1–19, 21–42, and 44–53 are unpatentable as obvious over Szrek; claims 20 and 43 are unpatentable as obvious over Szrek and Gilmore.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“We find Patent Owner’s contention persuasive. We agree that the description of a POSA in this case, which is most consistent with the scope and content of the ’894 patent and the prior art, properly includes a working knowledge of both POS activation systems and lottery systems. Therefore, the level of skill in the art for this case is an artisan with a working knowledge of POS activation systems and lottery systems that was gained through a mixture of training and work experience in the relevant field such as (i) having a Bachelor’s degree in computer science, computer communications, electrical engineering, or equivalent degree, coupled with at least three years of work experience; (ii) having a Master’s degree in computer science, computer communications, or electrical engineering, but having less work experience; or (iii) having no formal degree, but having experience in the relevant field of at least six years of work experience. Although Patent Owner’s proposal most accurately reflects the background of the hypothetical person of ordinary skill in the art, the differences between the parties’ proposed formulations are not material to any issue in dispute and the parties do not contend otherwise. All of the findings and conclusions set forth below would have been the same had we instead adopted Petitioner’s proposed formulation.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for patent owner
“After considering the parties’ arguments and evidence, we determine that the plain meaning of “transaction processor”/“transaction processor system” applies, which is a processor [system] that processes transactions between two devices.8 We agree with Petitioner that adding “third party” to the plain meaning simply creates uncertainty. For example, it is unclear whether “third party” imports a limitation for the owner/manufacturer of the processor/system to be a different entity than the owner/manufacturer of the retailer and lottery administration devices (which is unrelated to the functionality or structure of the processor/system) or whether “third party” 8 Rather than “between two devices,” Patent Owner refers to “between a lottery administration system and retailer.” PO Resp. 20. Because other elements in the claims dictate the particular devices with which the transaction processor communicates, we determine that it would be improper to import that limitation into the meaning of “transaction processor”/“transaction processor system.” Nevertheless, even if those particular devices were imported, it would not change our obviousness analysis because no issue rests on whether the alleged transaction processor in the prior art is processing a transaction between a lottery administration system and retailer. imports a limitation for the processor/system to be a separate and distinct device from the retailer point of sale and lottery administration devices. Although Patent Owner’s counsel made clear that the latter interpretation was intended (Tr. 41:10–42:7, 43:2–43:15), we do not agree that the use of the words “third party” in Figures 7 and 8 of the ’894 patent limits the “transaction processor” and “transaction processor system” to being a separate and distinct device from the retailer and lottery administration devices. Identifying the transaction processor as a “Third Party Processor” in two illustrative figures depicting a process (Ex. 1001, Figs. 7, 8), without anything more in the written description to explain why a “third party processor” may be an important or significant aspect of the transaction processor or invention as a whole, does not justify limiting the plain meaning of a “transaction processor” to the “third party processor” shown. Info-Hold, Inc. v. Applied Media Techs. Corp., 783 F.3d 1262, 1267 (Fed. Cir. 2015) (explaining that an invention will only be limited to its preferred embodiment when “the patentee uses words that manifest a clear intention to restrict the scope of the claims to that embodiment”).” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Therefore, we construe “transaction processor” and “transaction processor system” in accordance with their plain meaning, which is a processor [system] that processes transactions between two devices. Additionally, we decline to limit “transaction processor” and “transaction processor system” to “third party” processors or systems because the intrinsic record does not justify such a modification and it would create uncertainty. However, we do construe the “transaction processor”/“transaction processor system,” “retailer”/“retailer POS,” and “lottery administration system” as separate and distinct components.” slip op. at 22
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“processing unit, causes payment confirmation for the pre-printed lottery ticket to be provided to the lottery administration system. And Patent Owner disputes whether Petitioner has sufficiently shown Szrek discloses the transaction processor (store back office 240) provides payment confirmation to the lottery administration system (game provider 250). PO Resp. 13–14, 48–53; Sur-reply 19–20. We are persuaded by Petitioner, however, that Szrek’s description of the inter-operational characteristics of store back office 240, cash register/POS terminal 230, and game provider system 250 would have suggested to a skilled artisan at the time of the invention that store back office 240 would include an instruction to cause payment confirmation for the pre-printed lottery ticket to be provided to the game provider system 250. Ex. 1007, 4:28–29, 4:56–67, 5:17–20, 6:44–47; Ex. 1005 ¶¶ 62–64.” slip op. at 43
Patent outcomesUS 10,769,894 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,769,894 - New World Medical, Inc. v. The Regents Of The University Of CaliforniaAll claims unpatentablePTAB · Mar 11, 2022 · IPR2021-00066 · APJ Robert A Pollock · IPR · Final written decision
Claims 1–11 are unpatentable: claims 1–11 are anticipated by Quintana and obvious over Quintana; the Board did not reach the Jacobi ground.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“Patent Owner filed a motion to exclude evidence (Paper 38); Petitioner opposed (Paper 41); and Patent Owner filed a reply in support of its motion (Paper 43). Petitioner also filed a motion to exclude evidence (Paper 39); Patent Owner opposed (Paper 40); and Petitioner filed a reply in support of its motion (Paper 42). We addressed (and denied) the parties’ motions to exclude in Paper 49.” slip op. at 3
- Expert testimonyPetitioner expert creditedPatent owner expert discountedOther
“We “conclude[d] that the better course is to have a complete record of the evidence,” and, therefore, denied Petitioner’s Motion, but also explained that “to the extent that Dr. Condon’s testimony and Patent Owner’s reliance thereon ventures into areas the witness has conceded he either does not understand or has inadequately analyzed,” we would accord it little weight, as distinguished “from that relating to Dr. Condon’s technical expertise in, for example, anatomy, eye surgery, and his own reading of evidence.” Order 13. Therefore, it is through this lens that we consider and analyze Dr. Condon’s testimony here.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 22 (citing Ex. 1003 ¶ 24). On page 18 of our Institution Decision, we provisionally accepted Petitioner’s proposed definition, which was not opposed by Patent Owner, and is consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’544 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). As Patent Owner expressly agrees with our analysis, we apply Petitioner’s proposed definition here. See PO Resp. 11, n.4. C.” slip op. at 25
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“1. “A device useable to create an opening in the trabecular meshwork of the eye” Independent claim 1 is directed to “[a] device useable to create an opening in the trabecular meshwork of the eye” and having a “foot member . . . advanceable, tip first, through Schlemm’s Canal to facilitate performance of a surgical procedure using the surgical instrument.” Ex. 1001, 23:4–5, 23:18–20. As an initial matter, we consider the preamble of claim 1 limiting here because a device that “create[s] an opening in the trabecular meshwork” recites or, at a minimum, implies, “essential structure or steps” required for the insertion and advancement of the instrument through Schlemm’s Canal as set forth in [1.d]. See Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002).8” slip op. at 26
Patent outcomesUS 9,999,544 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,999,544 - W-W Manufacturing Co., Inc. v. Jager Pro, Inc.All claims unpatentablePTAB · Feb 16, 2022 · IPR2020-01471 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1–20 are unpatentable as obvious under §103 based on the combinations listed in the decision.
RulingsFinal written decision- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Motion to exclude, deniedDenied
“1 The Supplemental Response updated the following: (1) the exhibit list with a corrected description for Exhibit 2007, (2) the Conclusion (Part 8) of the Response to include a completed signature section, and (3) an updated Certificate of Compliance to confirm the word count of the Response. PO Supp. Resp. 2. 2 A combined oral hearing was held for this proceeding and related proceeding IPR2020-01470. 3 Petitioner served and then filed, at our request, a list of objections to Patent Owner’s demonstrative exhibits. Paper 37; see Tr. 6:3–26 (discussing Petitioner’s objections). As we explained at the oral hearing, “although the demonstratives are a useful aide during the oral hearing, we do not rely on them when rendering a final written decision. We rely on the arguments raised in the briefing and the evidence submitted in each case.” Tr. 6:11–15.” slip op. at 2
- Expert testimonyDecided for petitioner
“by Petitioner. In particular, Petitioner “substitut[es] the triggering mechanism and methodology of Jeong for the tripwire triggering mechanism known from the TexasBoars Combination” and asserts that such substitution “would yield predic[t]able results with a reasonable expectation of success.” Pet. 33–34 (citing Ex. 1002 ¶ 135). The success identified by Petitioner is making the modifications proposed—substituting or adding the teachings of Jeong to TB1/TB2 to create a remotely controlled, monitored/detected corral trap. Nothing about these modifications has anything to do with trap-shyness or conditioning of the animals as Patent Owner contends. Rather, the success has to do with whether one of ordinary skill in the art would have had a reasonable expectation of success in achieving the combination. And, Petitioner’s arguments are supported by Dr. Ditchkoff’s testimony (Ex. 1002 ¶ 135) as well as Jeong itself because Jeong effectively takes a trap and adds the same features (remote control and detection) that Petitioner proposes to add to TB1 and TB2 (see Pet. 20 (relying on Jeong and the stated benefits therein)). Accordingly, we find that Petitioner has established sufficiently that one of ordinary skill in the art would have had a reason with rational underpinning to make the modifications proposed and would have had a reasonable expectation of success in so doing.” slip op. at 63
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“by Petitioner. In particular, Petitioner “substitut[es] the triggering mechanism and methodology of Jeong for the tripwire triggering mechanism known from the TexasBoars Combination” and asserts that such substitution “would yield predic[t]able results with a reasonable expectation of success.” Pet. 33–34 (citing Ex. 1002 ¶ 135). The success identified by Petitioner is making the modifications proposed—substituting or adding the teachings of Jeong to TB1/TB2 to create a remotely controlled, monitored/detected corral trap. Nothing about these modifications has anything to do with trap-shyness or conditioning of the animals as Patent Owner contends. Rather, the success has to do with whether one of ordinary skill in the art would have had a reasonable expectation of success in achieving the combination. And, Petitioner’s arguments are supported by Dr. Ditchkoff’s testimony (Ex. 1002 ¶ 135) as well as Jeong itself because Jeong effectively takes a trap and adds the same features (remote control and detection) that Petitioner proposes to add to TB1 and TB2 (see Pet. 20 (relying on Jeong and the stated benefits therein)). Accordingly, we find that Petitioner has established sufficiently that one of ordinary skill in the art would have had a reason with rational underpinning to make the modifications proposed and would have had a reasonable expectation of success in so doing.” slip op. at 63
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“by new evidence other than deposition transcripts of the cross-examination of any reply witness.”); Consolidated Trial Practice Guide at 74 (Nov. 2019) (available at https://www.uspto.gov/TrialPracticeGuideConsolidated) (“‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.” (emphasis added)). Accordingly, the only claim for which we consider the question of nexus is claim 1.58” slip op. at 127
Patent outcomesUS 10,098,339 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,098,339 - W-W Manufacturing Co., Inc. v. Jager Pro, Inc.All claims unpatentablePTAB · Feb 16, 2022 · IPR2020-01470 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1–28 are unpatentable as obvious over the listed combinations of TB1, TB2, Jeong, and, where applicable, Vorhies, Silsby, and Kimura.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“1 A combined oral hearing was held for this proceeding and related proceeding IPR2020-01471. 2 Petitioner served and then filed, at our request, a list of objections to Patent Owner’s demonstrative exhibits. Paper 34; see Tr. 6:3–26 (discussing Petitioner’s objections). As we explained at the oral hearing, “although the demonstratives are a useful aide during the oral hearing, we do not rely on them when rendering a final written decision. We rely on the arguments raised in the briefing and the evidence submitted in each case.” Tr. 6:11–15. Thus, we have noted Petitioner’s objections, but we dismiss them as moot because demonstrative exhibits are not evidence and we do not rely on them in rendering this Final Written Decision.” slip op. at 2
- BurdenFwd all claims unpatentableUnpatentable
“Challenged Claims. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner must prove unpatentability by a preponderance of the evidence. See 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). Having reviewed the arguments and the supporting evidence, we determine that Petitioner has shown, by a preponderance of the evidence, that the Challenged Claims of the ’228 patent are unpatentable.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“by Petitioner. In particular, Petitioner “substitut[es] the triggering mechanism and methodology of Jeong for the tripwire triggering mechanism known from the TexasBoars Combination” and asserts that such substitution “would yield predic[t]able results with a reasonable expectation of success.” Pet. 28 (citing Ex. 1002 ¶ 110). The success identified by Petitioner is making the modifications proposed—substituting or adding the teachings of Jeong to TB1/TB2 to create a remotely controlled, detected corral trap. Nothing about these modifications has anything to do with trap-shyness or conditioning of the animals as Patent Owner contends. Rather, the success has to do with whether one of ordinary skill in the art would have had a reasonable expectation of success in achieving the combination. And, Petitioner’s arguments are supported by Dr. Ditchkoff’s testimony (Ex. 1002 ¶ 110) as well as Jeong itself because Jeong effectively takes a trap and adds the same features and method (remote control and detection) that Petitioner proposes to add to TB1 and TB2 (see Pet. 32 (relying on Jeong and the stated benefits therein)). Accordingly, we find that Petitioner has established sufficiently that one of ordinary skill in the art would have had a reason with rational underpinning to make the modifications proposed and would have had a reasonable expectation of success in so doing.” slip op. at 70
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“in a new direction with a new approach as compared to the positions taken in a prior filing.” (emphasis added)). Accordingly, the only claim for which we consider the question of nexus is claim 1.59” slip op. at 128
Patent outcomesUS 9,814,228 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,814,228 - Netflix, Inc. / Hulu, LLC v. Divx, LLCAll claims unpatentablePTAB · Jan 26, 2022 · IPR2020-00614 · APJ Monica S Ullagaddi · IPR · Final written decision
Claims 1–6, 9, 10, and 13–19 are unpatentable as obvious over Ueno, Fetkovich, and Demos.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“function” as recited in claim 1 to teach or suggest the “frame decryption function” recited in claim 14. See, e.g., Pet. 76. This reliance is due, in part, to the fact that the cited “references teach using symmetric algorithms,” which use the same key for encrypting and “decrypting the selected portions of encrypted frames in accordance with the frame decryption information.” Id. at 78 (citing Ex. 1004, 1:16–20; Ex. 1005, 6:52–56; Ex. 1006, 27:65– 28:1; Pet. §§ VI.A.1, VI.A.5 (claim 4); Ex. 1003 ¶ 257). Accordingly and as we determined in our Institution Decision, “the encryption parameters are the same for encryption and decryption” in Petitioner’s challenge. Inst. Dec. 8.” slip op. at 11
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“that Patent Owner “is not entitled to a presumption of nexus when the claimed features constitute a small part of the claimed product and are far from coextensive.” Id. Patent Owner asserts and Dr. Nielsen testifies that “DivX implemented its inventive partial encryption [method or approach] into DivX’s Digital Right Management Systems” and each cite to Exhibit 2020, a claim chart comparing challenged claims 1, 2, 4, 5, 10, 14, and 17–19 of the ’673 patent to features of DivX’s Decoder Software Development Kit (SDK). PO Resp. 11; Ex. 2008 ¶ 61. Patent Owner does not assert or explain that it is arguing secondary considerations of non-obviousness, does not attempt to establish a nexus between the claimed features and Patent Owner’s commercial product, and does not discuss or explain Exhibit 2020 in any level of detail. See generally PO Resp.; see also Pet. Reply 26 n.15 (citing Ex. 1029, 131:25–132:20) (Petitioner arguing that “Exhibit 2020 was not prepared by an expert witness or discussed in briefing”). For these reasons, we determine that a presumption of nexus is inappropriate here––Patent Owner does not provide an analysis demonstrating that its product(s) are coextensive (or nearly coextensive) with the challenged claim. See Lectrosonics, Paper 33 at 33. As such, we proceed to the second step of the analysis under Fox Factory.” slip op. at 52
- ExcludeMotion to exclude, grantedMotion to exclude, deniedMixed
“Exhibits 2004, 2005, 2006, 2010, and 2020 for not being authenticated (Fed. R. Evid. 901(a)), containing inadmissible hearsay (Fed. R. Evid. 801(c), 802; 37 C.F.R. § 42.53), improper opinions (Fed. R. Evid. 701, 602), and lacking relevance (Fed. R. Evid. 402). Mot. Ex. 6–10. Petitioner’s Motion to Exclude is dismissed as moot with respect to Exhibit 2020 because our decision would not be affected by the admission or exclusion of that exhibit—we do not rely on it in reaching our conclusion as to the patentability of the challenged claims.” slip op. at 77
Patent outcomesUS 7,295,673 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,295,673 - Intel Corporation v. Parkervision, Inc.All claims unpatentablePTAB · Jan 21, 2022 · IPR2020-01265 · APJ Bart A Gerstenblith · IPR · Final written decision
Claim 3 is unpatentable under §103 over Tayloe and the TI Datasheet; the Board did not reach the Tayloe and Kawada ground.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“outcome of this proceeding and we do not find that they do. Nonetheless, on the full record before us, we find that our identification of the level of ordinary skill in art in the Institution Decision as well as Patent Owner’s option (b) are supported by the prior art of record, the ’444 patent, and the opinions of Drs. Subramanian and Steer (which, as discussed above, recognize that additional work experience can compensate for the lack of a formal degree). Accordingly, we modify our preliminary finding to include option (b) from Patent Owner’s proposal. Thus, we find that one of ordinary skill in the art would have at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of RF circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems. We also find that less work experience may be compensated by a higher level of education, such as a master’s degree.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“proposes that it be construed to mean “an element that stores a nonnegligible amount of energy from an input electromagnetic (EM) signal.” Pet. Reply 10. Petitioner contends that its proposed construction expressly tracks the definition provided in the ’551 patent for “storage element,” which the parties agree is synonymous with “storage module.” Id.; see id. at 10 n.2. In particular, Petitioner asserts that the ’551 patent states: “Storage modules . . . refer to systems that store non-negligible amounts of energy from an input EM signal.” Id. (quoting Ex. 2007, 66:65–67). Petitioner notes that the ’551 patent also states that “the ‘goal of the storage modules’ is ‘to store non-negligible amounts of energy transferred from the EM signal’” and that the patent “specifically distinguishes storage elements from holding elements on this basis.” Id. at 10–11 (quoting Ex. 2007, 66:59–67 (“Holding modules . . . identify systems that store negligible amounts of energy from an under-sampled input EM signal with the intent of ‘holding’ a voltage value. Storage modules . . . on the other hand, refer to systems that store non-negligible amounts of energy from an input EM signal.”)). Thus, Petitioner contends “‘storage element’ should be construed accordingly.” Id. at 11 (citation omitted).” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Owner fails to “establish a nexus between the evidence and the merits of the claimed invention.” ClassCo, 838 F.3d at 1220. In particular, neither Patent Owner nor Dr. Steer makes any attempt to establish nexus with the elements recited in claim 3 based on a presumption of co-extensiveness or otherwise. Each instance in which Dr. Steer mentions claim 3, he only ties the discussion to energy transfer systems or energy sampling in general, which is based on Patent Owner’s proposed claim construction that we do not adopt. See, e.g., Ex. 1022 ¶¶ 229 (“energy transfer (energy sampling) system – of claim 3”), 230 (“energy sampling as set forth in claim 3”), 233 (“[u]sing energy sampling . . . as set forth in claim 3”), 234 (“energy sampling as set forth in claim 3”), 235 (same), 236 (same), 237 (“using the energy transfer (energy sampling) system of claim 3”), 238 (same), 239 (“energy sampling system as set forth in claim 3”). Thus, we find that Patent Owner fails to establish that a presumption of nexus is warranted and similarly fails to establish nexus absent the presumption. Accordingly, for the reasons above, Patent Owner has not satisfied its burden to establish nexus. See WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999) (patent owner “bears the burden of showing that a nexus exists”).” slip op. at 64
Patent outcomesUS 7,110,444 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,110,444
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.