- Parse Biosciences, Inc. v. 10x Genomics, Inc.All claims unpatentablePTAB · Feb 3, 2025 · IPR2023-00958 · APJ Michael J Fitzpatrick · IPR · Final written decision
Claims 1–28 are unpatentable as obvious: claims 1–12 and 19–28 over Linnarsson, McCloskey, and ordinary skill; claims 13–18 over those references plus McCloskey II.
RulingsFinal written decision- ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part
“Clearly, the second Hall-Ellis declaration is offered to prove that McCloskey is a prior art printed publication. See, e.g., Ex. 1085 ¶50 (“In view of the foregoing, it is my opinion that [McCloskey] was publicly available no later than [January 3, 2008].”). Thus, the second Hall-Ellis declaration should have been served within ten business days of Patent Owner’s February 15, 2024, objection to the admissibility of McCloskey. See 37 C.F.R. § 42.64(b)(2) (“The party relying on evidence to which an objection is timely served may respond to the objection by serving supplemental evidence within ten business days of service of the objection.”). In its Opposition to the Motion to Exclude, Petitioner argues that, under Hulu LLC v. Sound View Innovations, LLC, No. IPR2018-01039, Paper 29 (Dec. 20, 2019) (precedential), it was allowed to wait until its Reply to file the second Hall-Ellis declaration. Paper 37, 2. The Board in Hulu does state that, “if the patent owner challenges a reference’s status as a printed publication, a petitioner may submit a supporting declaration with its reply to further support its argument that a reference qualifies as a printed publication.” Hulu, at 15 (37 C.F.R. § 42.23). However, the Board’s statement was referring to the scope of permissible reply arguments under 37 C.F.R. § 42.23(b). See Hulu at 14 (quoting 37 C.F.R. § 42.23(b)’s requirement that “[a] reply may only respond to arguments raised in the corresponding opposition, patent owner preliminary response, or patent owner response”). The Board in Hulu does not purport to interpret 37 C.F.R. § 42.64 or even discuss supplemental evidence. Petitioner clearly missed the deadline imposed by 37 C.F.R. § 42.64(b)(2), which was triggered by Patent Owner’s February 15, 2024, objection to McCloskey (i.e., Ex. 1004). Patent Owner’s Motion to Exclude is granted with respect to the second Hall-Ellis declaration (i.e., Ex. 1085).” slip op. at 18
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Patent Owner is correct that, under Sanofi-Aventis, a petitioner bears the burden of persuasion to establish that an asserted prior art reference is analogous art to the claimed invention. See Sanofi-Aventis, 66 F.4th at 1377 (“We agree with [the patent owner] that [the petitioner] did not carry its burden to argue that de Gennes is analogous to the [challenged] patent.”); id. (“In evaluating whether a reference is analogous, we have consistently held that a patent challenger must compare the reference to the challenged patent.”); id. at 1378–79 (“We have routinely held that the petitioner has the burden of proving unpatentability.”). However, as we noted when instituting this proceeding, “Sanofi-Aventis further held: ‘A petitioner is not required to anticipate and raise analogous art arguments in its petition; instead a petitioner can use its reply to “respond to arguments raised in the corresponding opposition, patent owner preliminary response, patent owner response, or decision on institution.”’” Dec. on Reh’g 16 (quoting Sanofi- Aventis, 66 F.4th at 1379 (quoting 37 C.F.R. § 42.23)).” slip op. at 15
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Clearly, the second Hall-Ellis declaration is offered to prove that McCloskey is a prior art printed publication. See, e.g., Ex. 1085 ¶50 (“In view of the foregoing, it is my opinion that [McCloskey] was publicly available no later than [January 3, 2008].”). Thus, the second Hall-Ellis declaration should have been served within ten business days of Patent Owner’s February 15, 2024, objection to the admissibility of McCloskey. See 37 C.F.R. § 42.64(b)(2) (“The party relying on evidence to which an objection is timely served may respond to the objection by serving supplemental evidence within ten business days of service of the objection.”). In its Opposition to the Motion to Exclude, Petitioner argues that, under Hulu LLC v. Sound View Innovations, LLC, No. IPR2018-01039, Paper 29 (Dec. 20, 2019) (precedential), it was allowed to wait until its Reply to file the second Hall-Ellis declaration. Paper 37, 2. The Board in Hulu does state that, “if the patent owner challenges a reference’s status as a printed publication, a petitioner may submit a supporting declaration with its reply to further support its argument that a reference qualifies as a printed publication.” Hulu, at 15 (37 C.F.R. § 42.23). However, the Board’s statement was referring to the scope of permissible reply arguments under 37 C.F.R. § 42.23(b). See Hulu at 14 (quoting 37 C.F.R. § 42.23(b)’s requirement that “[a] reply may only respond to arguments raised in the corresponding opposition, patent owner preliminary response, or patent owner response”). The Board in Hulu does not purport to interpret 37 C.F.R. § 42.64 or even discuss supplemental evidence. Petitioner clearly missed the deadline imposed by 37 C.F.R. § 42.64(b)(2), which was triggered by Patent Owner’s February 15, 2024, objection to McCloskey (i.e., Ex. 1004). Patent Owner’s Motion to Exclude is granted with respect to the second Hall-Ellis declaration (i.e., Ex. 1085). Despite the exclusion of the second Hall-Ellis declaration, there is ample evidence in the record demonstrating that McCloskey is a prior art printed publication. McCloskey itself states: “Received: 31 January 2007 / Accepted: 29 May 2007 / Published online: 23 October 2007.” Ex. 1004, 1. McCloskey additionally states that it was published in a 2007 print issue of “Biochem Genet,” with Petitioner adding that the full name of the journal is BIOCHEMICAL GENETICS and that McCloskey was published in a December 2007 volume of the journal. Id.; Pet. 22. McCloskey also includes a copyright notice by “Springer Science+Business Media, LLC” with a date of 2007. Ex. 1004, 1. Patent Owner argues that this is unreliable hearsay that should be excluded. PO Mot. To Exclude 4 (citing Neste Oil Oyj v. REG Synthetic Fuels, LLC, No. IPR2013-00578, Paper 53 at 5–7 (Mar. 12, 2015); Standard Innovation Corp. v. Lelo, Inc., No. IPR2014-00148, Paper 429 at 13–18, 21–22 (Apr. 23, 2015)). We are not persuaded by Patent Owner’s argument or its reliance on these cases. The facts before us are different.” slip op. at 18
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner does not directly dispute Petitioner’s proposal but does offer its own proposal. PO Resp. 21. Patent Owner proposes that the skilled artisan “would have had a Ph.D. in molecular biology, molecular genetics, biochemistry, physics, mechanical engineering, or a related discipline, with 7 Exhibit 1002 is a declaration by Petitioner’s witness, Gregory Cooper, Ph.D. two years of academic, research, or industry experience in the field of genomic or transcriptome sequencing.” Id. (citing Ex. 2013 ¶¶25–268). Both of the parties’ proposals as to the level of ordinary skill in the art are consistent with the disclosure of the ’013 patent and the asserted prior art. The distinction between the parties’ proposals would not change the outcome of this Decision. Thus, we adopt and apply Patent Owner’s proposal.” slip op. at 9
Patent outcomesUS 10,697,013 unpatentable§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,697,013 - Parse Biosciences, Inc. v. 10x Genomics, Inc.All claims unpatentablePTAB · Jan 31, 2025 · IPR2023-00955 · APJ Michael J Fitzpatrick · IPR · Final written decision
Claims 1–26 are unpatentable as obvious: claims 1–4, 6–11, 20, and 23–25 over Linnarsson and McCloskey; claims 5, 12, 21, 22, and 26 with ordinary-skill knowledge; claims 13–19 with McCloskey II.
RulingsFinal written decision- ExcludeMotion to exclude, grantedGranted in part
“Clearly, the second Hall-Ellis declaration is offered to prove that McCloskey is a prior art printed publication. See, e.g., Ex. 1085 ¶50 (“In view of the foregoing, it is my opinion that [McCloskey] was publicly available no later than [January 3, 2008].”). Thus, the second Hall-Ellis declaration should have been served within ten business days of Patent Owner’s February 15, 2024, objection to the admissibility of McCloskey. See 37 C.F.R. § 42.64(b)(2) (“The party relying on evidence to which an objection is timely served may respond to the objection by serving supplemental evidence within ten business days of service of the objection.”). In its Opposition to the Motion to Exclude, Petitioner argues that, under Hulu LLC v. Sound View Innovations, LLC, No. IPR2018-01039, Paper 29 (Dec. 20, 2019) (precedential), it was allowed to wait until its Reply to file the second Hall-Ellis declaration. Paper 37, 2. The Board in Hulu does state that, “if the patent owner challenges a reference’s status as a printed publication, a petitioner may submit a supporting declaration with its reply to further support its argument that a reference qualifies as a printed publication.” Hulu at 15 (37 C.F.R. § 42.23). However, the Board’s statement was referring to the scope of permissible reply arguments under 37 C.F.R. § 42.23(b). See Hulu at 14 (quoting 37 C.F.R. § 42.23(b)’s in the prior sentence and in the subtitle to the relevant portion of its Objection. Id. requirement that “[a] reply may only respond to arguments raised in the corresponding opposition, patent owner preliminary response, or patent owner response”). The Board in Hulu does not purport to interpret 37 C.F.R. § 42.64 or even discuss supplemental evidence. Petitioner clearly missed the deadline imposed by 37 C.F.R. § 42.64(b)(2), which was triggered by Patent Owner’s February 15, 2024, objection to McCloskey. Patent Owner’s Motion to Exclude is granted with respect to the second Hall-Ellis declaration (i.e., Ex. 1085). Despite the exclusion of the second Hall-Ellis declaration, there is ample evidence in the record demonstrating that McCloskey is a prior art printed publication. McCloskey itself states: “Received: 31 January 2007 / Accepted: 29 May 2007 / Published online: 23 October 2007.” Ex. 1004, 1. McCloskey additionally states that it was published in a 2007 print issue of “Biochem Genet,” with Petitioner adding that the full name of the journal is BIOCHEMICAL GENETICS and that McCloskey was published in a December 2007 volume of the journal. Id.; Pet. 29. McCloskey also includes a copyright notice by “Springer Science+Business Media, LLC” with a date of date of 2007. Ex. 1004, 1. Patent Owner argues that this is unreliable hearsay that should be excluded. PO Mot. To Exclude 4 (citing Neste Oil Oyj v. REG Synthetic Fuels, LLC, No. IPR2013-00578, Paper 53 at 5–7 (Mar. 12, 2015); Standard Innovation Corp. v. Lelo, Inc., No. IPR2014- 00148, Paper 4210 at 13–18, 21–22 (Apr. 23, 2015)). We are not persuaded 10 Patent Owner actually cited to “Pap.41” of Standard Innovation. PO Mot. To Exclude 4. There is no Paper 41 in the record of that case. We presume Patent Owner intended to cite Paper 42, which is the final written decision in that case. by Patent Owner’s argument or its reliance on these cases. The facts before us are different. In Neste Oil, the Board “note[d] that the alleged ‘stamps’ of Exhibits 1125 and 1132 are actually handwritten dates, added to the documents by an unknown person at an unknown time.” Neste Oil, Paper 53 at 6. In contrast, the dates relied upon by Petitioner are printed, appear to have been included at the time of printing, and appear to have been printed by, or at the direction of, the journal and/or copyright holder, both of which are identified by McCloskey. Ex. 1004, 1. In Standard Innovation, the alleged prior art exhibits were “printouts of … webpages” bearing a copyright indication of “© 2003-2013,” which the petitioner argued was proof of subset of the webpages being disseminated publicly in 2003. Standard Innovation, Paper 42 at 13. This is a far cry from McCloskey, which is a journal article and which includes specific date information, not only of publishing, but also of when the journal received and accepted the article for publication as well as when it was copyrighted. Ex. 1004, 1.” slip op. at 18
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Patent Owner is correct that, under Sanofi-Aventis, a petitioner bears the burden of persuasion to establish that an asserted prior art reference is analogous art to the claimed invention. See Sanofi-Aventis, 66 F.4th at 1377 (“We agree with [the patent owner] that [the petitioner] did not carry its burden to argue that de Gennes is analogous to the [challenged] patent.”); id. (“In evaluating whether a reference is analogous, we have consistently held that a patent challenger must compare the reference to the challenged patent.”); id. at 1378–79 (“We have routinely held that the petitioner has the burden of proving unpatentability.”). However, as we noted when instituting this proceeding, “Sanofi-Aventis further held: ‘A petitioner is not required to anticipate and raise analogous art arguments in its petition; instead a petitioner can use its reply to “respond to arguments raised in the corresponding opposition, patent owner preliminary response, patent owner response, or decision on institution.”’” Dec. on Reh’g 15 (quoting Sanofi- Aventis, 66 F.4th at 1379 (quoting 37 C.F.R. § 42.23)).” slip op. at 14
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“by Patent Owner’s argument or its reliance on these cases. The facts before us are different. In Neste Oil, the Board “note[d] that the alleged ‘stamps’ of Exhibits 1125 and 1132 are actually handwritten dates, added to the documents by an unknown person at an unknown time.” Neste Oil, Paper 53 at 6. In contrast, the dates relied upon by Petitioner are printed, appear to have been included at the time of printing, and appear to have been printed by, or at the direction of, the journal and/or copyright holder, both of which are identified by McCloskey. Ex. 1004, 1. In Standard Innovation, the alleged prior art exhibits were “printouts of … webpages” bearing a copyright indication of “© 2003-2013,” which the petitioner argued was proof of subset of the webpages being disseminated publicly in 2003. Standard Innovation, Paper 42 at 13. This is a far cry from McCloskey, which is a journal article and which includes specific date information, not only of publishing, but also of when the journal received and accepted the article for publication as well as when it was copyrighted. Ex. 1004, 1. That McCloskey is what it purports to be (a journal article) and that it was published in 2007 are corroborated by multiple pieces of evidence.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“In sum, we find Petitioner’s rationale that a skilled artisan would have made the proposed combination to solve the problem of amplification bias persuasive.” slip op. at 44
Patent outcomesUS 10,240,197 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,240,197 - PTAB · Jan 27, 2025 · IPR2024-01179 · APJ Carl M Defranco · IPR · Institution
The Board instituted IPR of claims 1–25; it found a reasonable likelihood that claims 1, 2, 4–11, 16–20, and 22–24 are obvious over Waldner and Dynatek.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on our preliminary review, we agree with Solaris that Waldner discloses each of the assemblies, as claimed, except for the limitation requiring that the “inboard” and “outboard” segments of the conveyor extension assembly be “pivotally connected” to each other “about a substantially vertical axis,” as recited in claim elements 1(j) and 1(k). See Pet. 25–46 (mapping elements 1(a)–1(h) to Waldner and elements 1(i)–1(k) to Waldner and Dynatek).7 For those missing claim limitations, Solaris relies on Dynatek’s express teaching of constructing a conveyor belt assembly for granular materials from pivotally-connected segments capable of rotating relative to one another about a vertical axis. See id. at 43–46 (citing Ex, 1005, at 2). In doing so, Solaris provides persuasive reasoning for why a skilled artisan would have considered it obvious “to substitute” Dynatek’s two-part conveyor assembly for Waldner’s two-part conveyor chute and/or “to modify” Waldner’s two-part conveyor chute with Dynatek’s teaching of coupling the two-parts of a conveyor assembly to be pivotally connected. See id. at 26–28. Given Solaris’s persuasive and detailed showing at this stage, we find that Solaris demonstrates a reasonable likelihood that claim 1 is unpatentable” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Based on our preliminary review, we agree with Solaris that Waldner discloses each of the assemblies, as claimed, except for the limitation requiring that the “inboard” and “outboard” segments of the conveyor extension assembly be “pivotally connected” to each other “about a substantially vertical axis,” as recited in claim elements 1(j) and 1(k). See Pet. 25–46 (mapping elements 1(a)–1(h) to Waldner and elements 1(i)–1(k) to Waldner and Dynatek).7 For those missing claim limitations, Solaris relies on Dynatek’s express teaching of constructing a conveyor belt assembly for granular materials from pivotally-connected segments capable of rotating relative to one another about a vertical axis. See id. at 43–46 (citing Ex, 1005, at 2). In doing so, Solaris provides persuasive reasoning for why a skilled artisan would have considered it obvious “to substitute” Dynatek’s two-part conveyor assembly for Waldner’s two-part conveyor chute and/or “to modify” Waldner’s two-part conveyor chute with Dynatek’s teaching of coupling the two-parts of a conveyor assembly to be pivotally connected. See id. at 26–28. Given Solaris’s persuasive and detailed showing at this stage, we find that Solaris demonstrates a reasonable likelihood that claim 1 is unpatentable” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Based on our preliminary review, we agree with Solaris that Waldner discloses each of the assemblies, as claimed, except for the limitation requiring that the “inboard” and “outboard” segments of the conveyor extension assembly be “pivotally connected” to each other “about a substantially vertical axis,” as recited in claim elements 1(j) and 1(k). See Pet. 25–46 (mapping elements 1(a)–1(h) to Waldner and elements 1(i)–1(k) to Waldner and Dynatek).7 For those missing claim limitations, Solaris relies on Dynatek’s express teaching of constructing a conveyor belt assembly for granular materials from pivotally-connected segments capable of rotating relative to one another about a vertical axis. See id. at 43–46 (citing Ex, 1005, at 2). In doing so, Solaris provides persuasive reasoning for why a skilled artisan would have considered it obvious “to substitute” Dynatek’s two-part conveyor assembly for Waldner’s two-part conveyor chute and/or “to modify” Waldner’s two-part conveyor chute with Dynatek’s teaching of coupling the two-parts of a conveyor assembly to be pivotally connected. See id. at 26–28. Given Solaris’s persuasive and detailed showing at this stage, we find” slip op. at 8
§ 103 obviousnessPatents in suitUS 11,780,689 - Alivecor, Inc. v. Apple Inc.Some claims unpatentablePTAB · Jan 7, 2025 · IPR2023-00949 · APJ Scott A Daniels · IPR · Final written decision
Claims 11–14 and 16–20 are unpatentable over Kim; claim 15 was not shown unpatentable over Chang.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s asserted level of ordinary skill in the art is essentially the same as Petitioner’s, for example requiring a bachelor’s degree in science or engineering and “at least two years of relevant work experience with capture and processing of data or information, including but not limited to physiological information.” Id.; Pet. 9. In view of the similarity, our record now before us, and as we did in our Institution Decision, we rely on Petitioner’s proposed level of ordinary skill in the art as it is essentially the same as that proposed by Patent Owner. Petitioner’s asserted level of ordinary skill in the art is consistent with our review and understanding of the technology and descriptions in the ’619 patent and the asserted prior art references. Okajima, 261 F.3d at 1355.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“C. Claim Construction We interpret a claim “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(b) (2020). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Furthermore, “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither Patent Owner nor Petitioner indicate that any claim terms require construction. See generally Petition; PO Resp. For purposes of this Decision where no claim terms are in dispute, we need not explicitly construe any claim terms.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“What these cases and examples clearly articulate, is that whether there is sufficient description in an anticipation reference for linking different disclosures, elements, and embodiments, is particularly case and fact dependent. Moreover, a finding of anticipation resting upon a reference’s disclosures of elements in different embodiments turns on whether an ordinarily skilled artisan would understand that the reference suggests arranging the elements of the embodiments to one another in the same way as the challenged claims. For the reasons that follow, we determine that there is sufficient description and teaching in Kim such that the “combined button” disclosed by Kim, for example in Figure 10(b), can be the same “combined button” as discussed in the embodiment of Figure 18.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“As to Patent Owner’s first and second arguments, as we discussed in detail above with respect to anticipation, we find that there is sufficient evidence in Kim itself of contextual and even express links between the various combined button embodiments and Figure 18. Section II.D.2.b)(1)– (4). We have already determined “that one of ordinary skill in the art would understand Kim to disclose the ‘combined button’ structure and function that could be implemented on the face or sidewall of a device.” Id. We likewise determine, based on the same evidence, that a person of ordinary skill in the art would have understood Kim to suggest that the combined button structure and function, for example in the embodiment of Figure 10(b), could be implemented in an opening on the face or sidewall of a device. Obviousness does not require an instruction manual on how to physically incorporate or combine the disclosures of two embodiments in a reference. As KSR informs us, “in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” KSR, 550 U.S. at 420. Moreover, in this case we have only one prior art patent, Kim, so at least the pieces of the puzzle are all in the same box. The persuasive testimony of Dr. Berger that “a person of ordinary skill in the art would have been familiar with electronic devices with sealed and/or insulated button assemblies, and would understand that those assemblies were not limited to the front face of a device,” is unrebutted in this case. Ex. 1003 ¶ 110. “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. Given the background knowledge of a person of ordinary skill in the art in conjunction with the motivation and teachings in Kim itself for placing sufficient motivation to support the combination of Kim’s Figure 10(b) embodiment with the sidewall placement of the combined button taught in Figure 18 for obviousness purposes. It is well-settled that a single prior art obviousness reference itself can provide motivation for the combination. See General Elec. Co. v. Raytheon Techs. Corp., 983 F.3d 1334, 1352 (Fed. Cir. 2020) (Reversing the Board’s finding of nonobviousness over a single prior art reference, the Court explained that “the Board’s approach would require a motivation to combine each element of the claim—even those present together in a reference. This analysis unduly dissects prior art references into collections of individual elements, requiring a party showing obviousness to re-do the work already done in the prior art reference.”). Patent Owner’s third argument is unavailing because although Dr. Anthony testifies that “implementing the fingerprint sensor assembly of Kim’s Figure 10 embodiment in the ‘lateral surface’ of Kim’s Figure 18 embodiment would have complicated the manufacturing process for the resulting mobile device,” Dr. Anthony does not provide testimony or evidence that implementing the combined button on the sidewall would have been difficult or beyond the level of ordinary skill in the art. Ex. 2009 ¶ 73. We credit Dr. Berger who explains persuasively that “[p]rior to the ’619 patent’s earliest alleged priority date of June 19, 2017, a person of ordinary skill in the art would have known that a mobile electronic device could include one or more button assemblies in a sidewall.” Ex. 1003 ¶ 47 (citing Ex. 1013, 4:40, 19:42–20:4, Figs. 13B, 17, 19A, 19B). It is well-settled that a person of ordinary skill can use his or her ordinary skill, creativity, and common sense to make the necessary adjustments and further modifications to result in a properly functioning device. See KSR, 550 U.S. at 418 (“the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”).” slip op. at 43
Patent outcomesUS 10,866,619 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,866,619 - Alivecor, Inc. v. Apple Inc.All claims unpatentablePTAB · Jan 7, 2025 · IPR2023-00948 · APJ Scott A Daniels · IPR · Final written decision
Claims 1–10 are unpatentable: claim 1 is anticipated by Kim and claims 1–10 are obvious over Kim; the Board did not reach the Jung and Meyers or Chang grounds.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“one hand that “[a] ‘biometric characteristic’ or a ‘biometric identifier,’ as used herein, may refer to a human characteristic that is so distinctive and measureable that a particular human individual may be identified.” Ex. 1001, 5:9–14 (emphasis added). On the other hand, the ’619 patent also explains that “[t]he sensed human physical characteristic may vary widely, but may include fingerprint, palm veins, DNA, heart rate, and blood pressure.” Ex. 1001, 4:57–59. And, according to Patent Owner’s declarant, Dr. Anthony, heart rate and blood pressure, for instance, are biometric characteristics that do not necessarily “identify” a particular human being. See Ex. 2009 ¶ 28 (Dr. Anthony testifying that “[i]n my opinion, ‘heart rate’ and ‘blood pressure’ are embodiments of biometric characteristics that . . . are not sufficiently distinctive to enable identification of a particular human individual.”). Considering the written description as a whole, along with Patent Owner’s argument and Dr. Anthony’s testimony, we agree that “biometric characteristic” does not need a specific construction in this proceeding. We disagree with Petitioner that there is an actual dispute as to this term because, apart from an express construction, Kim discloses a fingerprint sensor. Pet. Reply 2. Regardless, our Decision does not turn on a specific construction of “biometric characteristic.” At least Kim discloses a fingerprint sensor which satisfies the biometric characteristic limitation in the challenged claims under either a plain and ordinary meaning of this term or under Petitioner’s proposed construction. See, e.g., Ex. 1004, 14:22–24” slip op. at 12
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner’s asserted level of ordinary skill in the art is essentially the same as Petitioner’s, for example requiring a bachelor’s degree in science or engineering and “at least two years of relevant work experience with capture and processing of data or information, including but not limited to physiological information.” Id.; Pet. 9. In view of the similarity, our analysis is not affected by choosing one over the other. On the complete record now before us, and as we did in our Institution Decision, we rely on same as that proposed by Patent Owner. Petitioner’s asserted level of ordinary skill in the art is consistent with our review and understanding of the technology and descriptions in the ’619 patent and the asserted prior art references. Okajima 261 F.3d at 1355 (Fed. Cir. 2001).” slip op. at 10
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We credit Petitioner’s declarant, Dr. Berger, in this case. Dr. Berger testifies that “a person of ordinary skill in the art would understand that a sealed and/or insulated button assembly from one location on a device can be constructed equally on a rear or sidewall of the device, as taught by at least Polany (Ex-1013).” Id. ¶ 110 (citing U.S. Patent No. 7,535,799 to further that “[p]rior to the ’619 patent’s earliest alleged priority date of June 19, 2017, a person of ordinary skill in the art would also have known that button assemblies in mobile electronic devices should be sealed in order to prevent ingress of potentially damaging moisture and dust.” Id. ¶ 48. Dr. Berger points to U.S. Patent No. 10,133,910 to Chang, explaining that “Chang discloses that ‘as users’ needs for portable terminals have been gradually diversified, a [home] key [button] used in the portable terminals includes a waterproof structure in order to prevent a fluid from infiltrating into the interior of the portable terminals.’” Id. (quoting Ex. 1015, 1:32–35). Dr. Berger maintains that sealing and attaching buttons to an electronic device was a common technique, testifying that Polany discloses that “[o]ne skilled the art would recognize many different methods of fastening a control feature into the housing, such as, but not limited to, screw, bolts, snap fit components, adhesives, press fits, co-molded components, overmolded components, ultrasonically welded components, rotational fits, wedge fits, and other manufacturing means of effecting the assembly of components” Id. ¶ 52 (quoting Ex. 1013, 21:5–11, 21:31–37). The fact that there would be certain design and structural differences between a combined button on the face of the electronic device, and a combined button on the side wall of the electronic device does not undermine Dr. Berger’s testimony that a person of ordinary skill in the art would have understood how to implement a button in a sidewall of an electronic device. See id. ¶ 47 (testifying “[f]or example, Polany discloses that the buttons (1315-1318) along the sidewall of the device included structures and surfaces that could be manually pressed by a user” and citing Ex. 1013, 4:40, 19:42–20:4, Figs. 13B, 17, 19A, 19B).” slip op. at 38
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“What these cases and examples clearly articulate is that whether there is sufficient description in an anticipation reference for linking different disclosures, elements, and embodiments, is particularly case and fact dependent. Moreover, a finding of anticipation resting upon a reference’s disclosures of elements in different embodiments turns on whether an ordinarily skilled artisan would understand that the reference suggests arranging the elements of the embodiments to one another in the same way as the challenged claims.. For the reasons that follow, we determine that there is sufficient description and teaching in Kim such a person of ordinary skill in the art would have understood that the “combined button” disclosed by Kim, for example in Figure 10(b), can be the same “combined button” as discussed in the embodiment of Figure 18.” slip op. at 28
Patent outcomesUS 10,866,619 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,866,619 - Alivecor, Inc. v. Apple Inc.Some claims unpatentablePTAB · Dec 23, 2024 · IPR2023-00950 · APJ Josiah C Cocks · IPR · Final written decision
Claims 1–14 were not shown unpatentable; claims 15–22 were shown unpatentable over Markel. The revised contingent motion to amend was dismissed as moot.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“In carefully and faithfully wrangling the parties’ views and explanation as to the meaning of limitation [1.c.iii], we conclude that Petitioner’s “correct interpretation” of that limitation is that a first pad is recognized as a distinct structure or component from a first portion of an enclosure, and that the pad is positioned underneath that first portion in a manner such that the pad is concealed from a user. We adopt that interpretation. We determine that it is unnecessary to discuss an express construction for any other term to resolve this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s proposed level of ordinary skill in the art is somewhat broader in both education and proposed work experience. Patent Owner’s proposed work experience is somewhat vague and potentially outside the scope of the claimed invention. For example, the requirement that the person of ordinary skill in the art have experience with the “capture and processing of data or information, including but not limited to physiological information,” would seemingly encompass data processing areas that do not relate to the scope of the claimed invention. We adopt Petitioner’s level of the level of ordinary skill in art because it is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). Nevertheless, our analysis and the end result are the same under either proposed definition.” slip op. at 13
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Patent Owner makes a more persuasive case as to what a person of ordinary skill in the art reasonably would have understood from Markel’s disclosure. In particular, we agree with Patent Owner that the record before us readily conveys that a skilled artisan would have followed Markel’s practice of forming or molding electrodes from conductive plastic rather than locating a separate electrode component underneath a conductive plaster layer. See, e.g., PO Resp. 30–31 (“[a] POSITA would find nothing in cited portions of Markel to inform or encourage placement of an electrode underneath an exterior layer.”). Indeed, as Patent Owner articulates, Petitioner “fails to provide any reasoning as to why a POSITA would have found Markel’s method of concealment to be deficient, or why a POSITA would have been motivated in light of Markel’s manner of concealment to nevertheless place an electrode underneath the exterior portion of the device.” Id. To that end, we credit Dr. Kenny’s supporting testimony as consistent with Markel’s express teachings. See, e.g., Ex. 2001 ¶¶ 77–83; Ex. 2004 ¶¶ 81–88. We credit that testimony over the countervailing testimony of Petitioner’s declarant, Dr. Berger (see, e.g., Ex. 1003 ¶¶ 122, 135–139), as we agree with Patent Owner that Dr. Berger’s testimony “is not supported by Markel’s actual disclosures.” PO Resp. 31.” slip op. at 33
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable
“Petitioner does not appear to disagree that Markel, itself, does not convey that an electrode, or any structure identifiable as a “pad,” is positioned underneath any surface of any enclosure. Rather, Petitioner’s theory of unpatentability is premised on modification of Markel to so position such a pad. Although seemingly acknowledging that Markel contemplates a concealment technique involving molding an electrode into an exterior surface, Petitioner extrapolates from that disclosure that a skilled artisan would be motivated to try an alternative means of concealing an electrode pad by placing the pad underneath an outer layer or portion, i.e., “audio output portion 610.” See Pet. 20 (citing Ex. 1003 ¶ 135). Neither Petitioner, nor Dr. Kenny, however, meaningfully explains why a skilled artisan would have deviated from Markel’s express teachings of concealing an electrode via molding techniques to then arrive at an entirely different concealment approach of placing an electrode pad underneath the audio output portion. Petitioner’s modification proposal in that regard appears borne of hindsight bias based on the disclosure of the ’257 patent rather than any dutiful consideration of what Markel’s actual teachings would have conveyed to a skilled artisan. See Ex. 2004 ¶ 84 (Dr. Kenny explaining why Petitioner’s proposed modification to Markel to hide the electrode underneath a plastic conductive layer was based on improper hindsight). Such hindsight bias is impermissible. See, e.g., Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017) (“[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.”). Patent Owner makes a more persuasive case as to what a person of ordinary skill in the art reasonably would have understood from Markel’s disclosure. In particular, we agree with Patent Owner that the record before us readily conveys that a skilled artisan would have followed Markel’s practice of forming or molding electrodes from conductive plastic rather than locating a separate electrode component underneath a conductive plaster layer. See, e.g., PO Resp. 30–31 (“[a] POSITA would find nothing in cited portions of Markel to inform or encourage placement of an electrode underneath an exterior layer.”). Indeed, as Patent Owner articulates, Petitioner “fails to provide any reasoning as to why a POSITA would have found Markel’s method of concealment to be deficient, or why a POSITA would have been motivated in light of Markel’s manner of concealment to nevertheless place an electrode underneath the exterior portion of the device.” Id. To that end, we credit Dr. Kenny’s supporting testimony as consistent with Markel’s express teachings. See, e.g., Ex. 2001 ¶¶ 77–83; Ex. 2004 ¶¶ 81–88. We credit that testimony over the countervailing testimony of Petitioner’s declarant, Dr. Berger (see, e.g., Ex. 1003 ¶¶ 122, 135–139), as we agree with Patent Owner that Dr. Berger’s testimony “is not supported by Markel’s actual disclosures.” PO Resp. 31.” slip op. at 32
Patent outcomesUS 10,076,257 mixedClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,076,257 - Cambridge Mobile Telematics, Inc. v. Sfara, Inc.Institution deniedPTAB · Dec 13, 2024 · IPR2024-00966 · APJ John F Horvath · IPR · Institution
The Board denied institution because the Petition did not explain whether the component limitations invoke § 112(f) or identify corresponding structure, as required by Rule 42.104(b)(3).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“The Consolidated Trial Practice Guide[1,2](“CTPG”) . . . instructs that “[w]here claim language may be construed according to 35 U.S.C. § 112(f), a petitioner must provide a construction.” CTPG 45 (emphases added) (citing 37 C.F.R. § 42.104(b)(3)). The CTPG advises that a party “may choose to elaborate why § 112(f) should or should not apply to the limitation at issue.” Id. Notably, the CTPG warns that “[a] petitioner who chooses not to address construction under § 112(f) risks failing to satisfy the requirement of 37 C.F.R. § 42.104(b)(3).” Id.” slip op. at 6
- BurdenDenied
“Given these facts, we determine that rule 104(b)(3) mandates that the Petition either identify “the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function” recited in the “component” term limitations or explain why the “component” term limitations are not subject to a means-plus-function construction. This, it fails to do. To be clear, we note that our rules do not prohibit a petitioner from taking inconsistent claim construction positions before the Board and a district court. See 10x Genomics, Inc. v. Bio-Rad Labs, Inc., IPR2020- 00086, Paper 8 at 18 (PTAB Apr. 27, 2020). However, where, as here, a petitioner has proposed a claim term be construed solely as a means-plus-function limitation in a district court proceeding and emphasized that the issue is not only “most significant” but potentially “case . . . dispositive,” we determine the petition is obliged to either apply that construction in this proceeding or explain why that construction is not applicable. Accordingly, we find the Petition to be deficient under rule 104(b)(3).4” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Other
“connote a definite structure. See Williamson, 792 F.3d at 1350 (identifying words such as “mechanism,” “element,” “device,” and others as verbal constructs that do not connote sufficiently definite structures). Indeed, the Specification discloses all of the “components” recited in claims 1, 8, and 15, including the “comparing component,” can be “implemented as a computer having tangible computer-readable media for carrying or having computer-executable instructions or data structures stored thereon.” Ex. 1001, 5:35–43. Thus, like the word “module,” a recognized nonce word, each of the recited “components” is nothing more than “a generic description for software or hardware that performs a specified function” and their recitation “operate[s] as a substitute for ‘means’ in the context of § 112, para. 6.” Williamson, 792 F.3d at 1350. Accordingly, we construe the “comparing component” limitation recited in claims 1, 8, and 15 as a meansplus-function limitation whose function is “generating a comparison signal.”2” slip op. at 14
- Skill levelNot reached
Claim constructionDiscretionary denialcites MarkmanPatents in suitUS 9,333,946 - Cambridge Mobile Telematics, Inc. v. Sfara, Inc.Institution deniedPTAB · Dec 13, 2024 · IPR2024-00952 · APJ Brent M Dougal · IPR · Institution
The Board denied institution on claims 1–18 because the Petition failed to satisfy 37 C.F.R. § 42.104(b)(3) by omitting required claim-construction analysis.
RulingsInstitution decision- BurdenDenied
“Under these facts we determine that 37 C.F.R. § 42.104(b)(3) mandates that the Petition “identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” The Petition failed to do so. At a minimum, the Petition should have explained why the plain and ordinary meaning of the “component” terms should apply in this proceeding (why the inconsistent positions are warranted) or set forth an alternative means-plus-function claim construction. CTPG 45.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“Under these facts we determine that 37 C.F.R. § 42.104(b)(3) mandates that the Petition “identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” The Petition failed to do so. At a minimum, the Petition should have explained why the plain and ordinary meaning of the “component” terms should apply in this proceeding (why the inconsistent positions are warranted) or set forth an alternative means-plus-function claim construction. CTPG 45.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Under these facts we determine that 37 C.F.R. § 42.104(b)(3) mandates that the Petition “identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” The Petition failed to do so. At a minimum, the Petition should have explained why the plain and ordinary meaning of the “component” terms should apply in this proceeding (why the inconsistent positions are warranted) or set forth an alternative means-plus-function claim construction. CTPG 45.” slip op. at 8
Claim constructionDiscretionary denialcites MarkmanPatents in suitUS 8,989,952 - Maplebear Inc. D/B/A Instacart v. Consumeron, LLCAll claims unpatentablePTAB · Nov 20, 2024 · IPR2023-00865 · APJ Carl M Defranco · IPR · Final written decision
Claims 1–19 are unpatentable under § 103 over Carr and Lauka, with additional references for the dependent-claim grounds, because the challenged claims lack priority support in the ’848 application.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Instacart submits that a person of ordinary skill in the art (“POSITA”) would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately two years of experience working in the field of electronic commerce” and that “[l]ack of work experience can be remedied by additional education, and vice versa.” Pet. 27 (citing Ex. 1003 ¶¶ 22–25). Consumeron responds that one skilled in the art would have been “someone with a background in electrical engineering, computer science, or the like” and that “industry experience can make up for a lack of technical training, and more education can make up for a lack of industry experience.” PO Resp. 7 (citing Ex. 2016 ¶¶ 19–23). But, as Consumeron’s expert acknowledges, Consumeron’s proposed definition “is not materially different” from Instacart’s. See Ex. 2016 ¶ 22. Accordingly, while we adopt the level of skill in the art as defined by Instacart our findings and analysis would be the same under Consumeron’s proposal.” slip op. at 7
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“8 Consumeron argues Dr. Houh’s testimony should be given little weight because he “admitted he did not evaluate what the ’848 Application reasonably conveys to a skilled artisan.” Resp. 26 (citing Ex. 2011, 74:8– 76:6, 83:4–84:1, 92:22–95:5). We disagree. Dr. Houh’s testimony indicates that he properly considered what the ’848 application reasonably conveys to a POSITA. See Ex. 1003 ¶¶ 52, 56, 58, 61, 65. The portions of his cross-examination testimony cited by Consumeron do not suggest otherwise. For the reasons explained below, we credit Dr. Houh’s testimony over the competing interpretations offered by Consumeron and Dr. Mitzenmacher. 9 The dissent criticizes the majority’s analysis as “overly narrow” and too focused on the preferred embodiment. See Dissent 7–8. We disagree. Our analysis considers the entirety of the ’848 application, including all of the passages cited by Consumeron and the dissent.” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner
“But it does not follow that an agent encountering a stock-out would necessarily respond according to the specific steps recited in claims 1 and 14.10 For example, instead of sending information about a replacement product, the agent could travel to another location to look for the same product, or notify the customer that the desired product could not be found and terminate the transaction. Because the ’848 application only contemplates scenarios where a product can be located, it does not describe the agent’s response in the event the identified product cannot be located or is unavailable, much less reasonably convey possession of a method comprising the specific, responsive steps in claims 1 and 14.11” slip op. at 17
- Prior constructionPrior construction adoptedTerm construed petitioner constructionDecided for petitioner
“construed the terms “acquisition request” and “acquiring” in our final written decision in the related 1357 IPR to encompass “not only a request for a delivery agent to shop for and purchase goods, but also a request for the agent to pick up or obtain pre-paid goods.” See 1357 IPR, Paper 35 at 11. It is undisputed that the ’465 patent at issue here and the ’835 patent at issue in the 1357 IPR are related and share essentially identical specifications, figures, and claim terms. See Pet. Reply 16; PO Resp. 38 n.6. Thus, for the same reasons as in our final written decision in the related 1357 IPR, we likewise determine here that Instacart’s construction of “acquisition request” is the correct one. See SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307, 1316 (Fed. Cir. 2015) (“Where multiple patents ‘derive from the same parent application and share many common terms, we must interpret the claims consistently across all asserted patents.’” (quoting NTP, Inc., v. Research in Motion, Ltd., 418 F.3d 1282, 1293 (Fed. Cir. 2005)). Consumeron provides no persuasive justification for us to depart from our prior reasoning in the related 1357 IPR.” slip op. at 23
Patent outcomesUS 11,238,465 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 11,238,465 - Nintendo Co., Ltd. / Nintendo Of America Inc. v. Gamevice, Inc.All claims unpatentablePTAB · Oct 29, 2024 · IPR2023-00643 · APJ Matthew S Meyers · IPR · Final written decision
Claims 1–7 are unpatentable as obvious over Willner and Park; the Board did not reach the other instituted grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The main distinction between Petitioner’s ordinarily skilled artisan and Patent Owner’s is that Patent Owner’s definition requires “a mechanical engineering degree” whereas Petitioner’s definition allows for a degree in “mechanical, electrical, or computer engineering.” See Pet. Reply 16 (citing Pet. 13). However, Mr. Kitchen states that he qualifies as one of ordinary skill in the art based on Patent Owner’s proffered definition “even without an undergraduate degree in mechanical engineering” because he has “over 40 years of experience in the design and development of interactive products, including specifically with respect to handheld gaming devices.” Ex. 1033 ¶ 7 (citing Ex. 1002 ¶¶ 24–30). Mr. Kitchen asserts that his experience is in “the same category of products claimed in the ’393 patent and described in the prior art references at issue in this proceeding.” Id. In view of this and based on the complete record before us, we view the parties’ proposals as substantially the same because Petitioner’s proposed definition includes the requisite education Patent Owner’s definition requires. Thus, we find (as we did in the Institution Decision) that Petitioner’s level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’393 patent and the prior art of record. See Inst. Dec. 20–21 (citing Okajima, 261 F.3d at 1355). More particularly, we do not agree with Patent Owner that the education component for the level of ordinary skill in the art for computing gaming devices would be limited to just mechanical engineering. We note that, based on the record and evidence before us, our decision and analysis would be the same applying either party’s definition of a person of ordinary skill in the art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“After reviewing the full record, we determine that it is unnecessary to construe the term “confinement structures,” as it appears in the limitation “a pair of confinement structures” to reach a determination in this proceeding. 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)). However, we will address the parties’ dispute regarding whether the prior art discloses or teaches physical component(s) that hold(s) a computing device within our merits analysis below. The parties do not dispute the construction of any other claim terms and we find that no other terms require express construction to resolve the controversy between the parties. Accordingly, we do not construe any other claim terms expressly. See Realtime Data, 912 F.3d at 1375 (“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., 200 F.3d at 803).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“First, the test for obviousness “is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference, . . . but rather whether ‘a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention.’” Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016); see also Pet. Reply 11–12 (arguing the same). Second, we disagree with Patent Owner’s assertion that the proposed combination would fail “to retain[] computing device 10 in position during normal user operation” because Park’s adjustable bridge “configuration does not allow mobile phone (1) to be seated for stability in the device.” PO Resp. 20 (citing Ex. 1004 ¶ 42; Ex. 2004 ¶ 68). At the outset, we note that Patent Owner’s argument mischaracterizes the disclosure of Park. Instead, we find Park discloses that a “basic configuration of [Park’s] game pad device for a mobile phone according to the present invention” “sufficiently allows mobile phone (1) to be mounted on the device according to the present invention and used.” Ex. 1004 ¶¶ 25, 41. Although Park discloses that “mobile phone (1) may come loose during gaming or become detached in severe cases” (id. ¶ 41), we do not view this disclosure to otherwise negate Park’s teaching that its adjustable bridge (30,40) “sufficiently allows mobile phone (1) to be mounted on the device according to the present invention and used.” Id. We credit Mr. Kitchen’s declaration testimony to that effect. See Ex. 1033 ¶ 47 (declaring that one of ordinary skill in the art would have “understood this disclosure to mean that a computing device (mobile phone) would have been secured by the device for normal use . . . as part of a handheld gaming device.”).” slip op. at 24
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We agree with Petitioner and find more credible Mr. Kitchen’s opinion regarding “normal user operation.” In doing so, we credit Mr. Kitchen’s opinion that Willner’s sidewalls would “function to secure the sides of the computing device and hold it in place” and, “[i]n the combination, Park’s bridge would be adjusted to reduce the length of the bridge and thereby ‘mount’ a computing device by having Willner’s side walls (confinement structures) ‘apply pressure’ to opposing sides of the computing device.” Ex. 1002 ¶¶ 154–156 (citing Ex. 1004 ¶¶ 38–41). We note that the ’393 patent operates in a similar manner using a sufficient compressive load to hold a computing device. More particularly, the ’393 patent discloses that [t]he expansion and contraction of the distance between the pair of confinement structures 316, facilitates placement of the computing device 302 between the pair of confinement structures 316, the application of sufficient compressive load being placed on the computing device 302 to securely hold the computing device between the pair of confinement structures 316. Ex. 1001, 10:11–20. Thus, we find Mr. Kitchen’s opinion credible and supported by the complete record. Accordingly, we find that Petitioner has proven, by a preponderance of the evidence, that the combination of Willner and Park teaches or suggests “a pair of confinement structures,” as recited by limitation 1[b][1].” slip op. at 22
Patent outcomesUS 10,391,393 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,391,393
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.