• One World Technologies, Inc., D/B/A Techtronic Industries Power Equipment v. Chervon (HK) LimitedNo claims unpatentable
  PTAB · Nov 3, 2021 · IPR2020-00888 · APJ Alyssa A Finamore · IPR · Final written decision

  Claims 1–12, 15–17, and 19–21 were not shown unpatentable because the asserted §103 combinations lacked persuasive support for the claimed safety control devices.

  RulingsFinal written decision

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

    “lawnmower and Nakano’s control device that disables the motor when the telescoping tubes are partially collapsed is premised on the safety issue of a user getting too close to the blade path when the user rotates Reichart’s handle between the in-use and storage positions. Even if we agree with Petitioner that this safety issue exists, it is the rotation, not the telescoping, of the handle that causes a user to get too close to the blade path. Reichart discloses the shortest length of the handle in the in-use position maintains minimum spacing “a” with respect to blade circular path 8. Ex. 1007, 4:31–5:5, 6:1–5. Although reducing minimum spacing “a” could bring a user and the operating elements on the handle too close to the blade path, such a reduction is effected by rotating telescopic tube 3 over casing 1, not sliding upper part 3b of telescopic tube 3 relative to lower part 3a. Moreover, as shown in Petitioner’s annotated version of Reichart’s Figure 4, telescoping the handle to a different length would not cause a user to stand in a different position other than the unsafe position shown with the red footprints to rotate the handle between the in-use and storage positions. Given that rotation, not telescoping, of Reichart’s handle brings a user and the operating elements too close to the blade path, we agree with Patent Owner that modifying Reichart’s lawnmower to include Nakano’s control device that activates and deactivates the motor based on the sliding position of the telescopic tubes would not have ensured that the operating elements and the user are a safe distance from the blade path. Petitioner’s rationale for adding Nakano’s control device to Reichart’s lawnmower lacks rational underpinning. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006))).” slip op. at 38

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

    “18 We do not understand Petitioner to be arguing that it would have been obvious to combine hold-to-run control component 30 and the electrical supply contactor associated therewith from Outils’s embodiment shown in Figure 1 with activation actuator 23 and cam 24 of Outils’s embodiment shown in Figure 10. A petitioner must explain why a POSITA would have combined the elements, including those disclosed in separate embodiments described in a single reference. See KSR Int’l Co., 550 U.S. at 418 (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”); In re Stepan Co., 868 F.3d 1342, 1345–46 n.1 (Fed. Cir. 2017) (“Whether a rejection is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful . . . .”). Petitioner does not provide any such explanation, reinforcing our understanding that Petitioner relies on the position that a POSITA would have understood the embodiment of Figure 10 to include, without modification, hold-to-run control component 30 controlling the electrical supply contactor from Figure 1. electrical supply contactor. Ex. 1014, 8:22–9:13.19 Similarly, Petitioner does not direct us to, nor do we discern, any depiction associated with Outils’s Figure 10 of a hold-to-run control component connected to an electrical supply contactor.” slip op. at 44

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerGranted

    “v. Capella Photonics, Inc., our jurisdiction to consider a petition does not require a “correct” identification of all RPIs in a petition. IPR2015-00739, Paper 38, 6 (PTAB Mar. 4, 2016) (precedential); see also Blue Coat Sys., Inc. v. Finjan, Inc., IPR2016-01444, Paper 11, 10 (PTAB July 18, 2017) (“Evidence [of failure to identify all RPIs] is, at best, suggestive of an issue that is not jurisdictional.”). The Federal Circuit agrees that § 312(a)(2) is not jurisdictional. See Mayne Pharma Int’l Pty. Ltd. v. Merck Sharp & Dohme Corp., 927 F.3d 1232, 1240 (Fed. Cir. 2019) (“[I]f a petition fails to identify all real parties in interest under § 312(a)(2), the Director can, and does, allow the petitioner to add a real party in interest.” (quoting Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364, 1374 n.9 (Fed. Cir. 2018) (en banc))). Accordingly, a petitioner may amend its mandatory notices to add a RPI and still maintain its original filing date. See, e.g., Adello Biologics LLC v. Amgen Inc., PGR2019-00001, Paper 11, 5 (PTAB Feb. 14, 2019) (precedential) (authorizing pre-institution update to Mandatory Notices to add a RPI); Proppant Express Investments, LLC v. Oren Techs., LLC, IPR2017-01917, Paper 86, 7 (PTAB Feb. 13, 2019) (precedential) (“The Board may, under 35 U.S.C. § 312(a), accept updated mandatory notices as long as the petition would not have been time-barred under 35 U.S.C. § 315(b) if it had included the real party in interest.”). In determining whether to permit a petitioner to amend its mandatory notices to add a RPI while maintaining the original filing date, we consider “whether there have been (1) attempts to circumvent the § 315(b) bar or estoppel rules, (2) bad faith by the petitioner, (3) prejudice to the patent owner caused by the delay, or (4) gamesmanship by the petitioner.” Proppant, IPR2017-01917, Paper 86 at 6–7.” slip op. at 59

  • ExcludeGranted

    “The moving party has the burden of proof in showing it is entitled to the requested relief. 37 C.F.R. § 42.20(c). The standard for granting a motion to seal is “good cause.” 37 C.F.R. § 42.54. “The ‘good cause’ standard for granting a motion to seal reflects the strong public policy for making all information in an inter partes review open to the public.” Argentum Pharm. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 at 3 (PTAB Jan. 19, 2018) (informative).” slip op. at 64

  Patent outcomesUS 10,070,588 not shown unpatentable
  § 103 obviousnesscites KSR
  Patents in suitUS 10,070,588
• One World Technologies, Inc., D/B/A Techtronic Industries Power Equipment v. Chervon (HK) LimitedNo claims unpatentable
  PTAB · Nov 3, 2021 · IPR2020-00887 · APJ Alyssa A Finamore · IPR · Final written decision

  Claims 1–20 were not shown unpatentable because the cited combinations failed to establish the claimed control devices and a reason to combine the teachings.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedOther

    “As set forth in our Trial Practice Guide12, there is no requirement of a perfect match between a declarant’s experience and the relevant field. CTPG 34 (citing SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010)). We generally permit testimony where the declarant’s scientific, technical, or other specialized knowledge will help the Board understand the evidence or determine a fact in issue. Id. (citing Fed. R. Evid. 702(a)). Mr. Smith has a Bachelor of Science degree in Mechanical Engineering and is a Certified Safety Professional in comprehensive practice. Ex. 2027 ¶¶ 3, 5. Mr. Smith is President of Alpine Engineering & Design, Inc., and has over thirty years of experience with mechanical design, including the design of lawnmower controls. Id. ¶ 6. Given his education in mechanical engineering and his experience with mechanical design, we find Mr. Smith’s testimony may be helpful in deciding factual issues in this proceeding. Moreover, when assigning weight to a declarant’s testimony, we consider the underlying facts or data upon which the testimony is based. CTPG 40–41. In our analysis of the asserted grounds of unpatentability, we weigh Mr. Smith’s testimony accordingly.” slip op. at 26

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner contends a POSITA “would have had at least a bachelor’s degree in mechanical engineering, electrical engineering, or similar technical field, with at least three years of relevant product design experience.” Pet. 12–13. Petitioner further contends “[a]n increase in experience could compensate for less education.” Id. at 13 (citing Ex. 1003 ¶ 46). Patent Owner adopts Petitioner’s proposed level of ordinary skill in the art exclusively for this proceeding. PO Resp. 5. We find Petitioner’s proposal is consistent with the level of ordinary skill reflected in the asserted references, which involve various mechanical and electrical aspects of gardening tools such as lawnmowers. For instance, Reichart discloses a lawnmower having a handle that is adjustable to different heights to accommodate users of varying heights (Ex. 1007, code (57)), and Outils teaches a lawnmower having a safety device that prevents access to the rotating cutting blade (Ex. 1014, code (57)). Accordingly, we adopt Petitioner’s proffered level of ordinary skill in the art.” slip op. at 27

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

    “Petitioner proposes constructions for three claim terms—“power supply circuit” and the related terms “locks” and “unlocks.” Pet. 14–17; Reply 5. Patent Owner “believes that no construction is required for [‘power supply circuit’] because the construction of this term is not relevant to the issues raised herein.” PO Resp. 11; see also Sur-reply 2 (arguing the construction of “power supply circuit” is not relevant to the issues raised in this proceeding). Moreover, for purposes of this proceeding only, Patent Owner does not dispute Petitioner’s proposed constructions for “locks” and “unlocks.” PO Resp. 11. The parties do not dispute the meanings of the claims terms “locks” and “unlocks,” and we agree with Patent Owner that an express construction of the claim term “power supply circuit” is unnecessary to resolve the dispute. For the reasons set forth in our analysis of the asserted grounds of unpatentability, we determine that no claim term requires an express construction for us to ascertain whether Petitioner has shown the challenged claims to be unpatentable.” slip op. at 28

  • BurdenFwd all claims patentableNot shown unpatentable

    “demonstrated Outils teaches or suggests a second control device that unlocks and locks the first control device, as recited in limitation [1f]. Also, as we explain in section III.D.1.b, Petitioner has not persuaded us that a POSITA would have combined the teachings of Reichart and Nakano to result in the claimed subject matter, including limitation [1g]. Petitioner has not proven, by a preponderance of the evidence, that the subject matter of independent claim 1 would have been obvious over Reichart, Nakano, Outils, and 16 CFR 1205. 2. Independent Claim 11 Like independent claim 1, independent claim 11 recites, in pertinent” slip op. at 51

  Patent outcomesUS 9,986,686 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 9,986,686
• One World Technologies, Inc., D/B/A/ Techtronic Industries Power Equipment v. Chervon (HK) LimitedNo claims unpatentable
  PTAB · Nov 3, 2021 · IPR2020-00884 · APJ James J Mayberry · IPR · Final written decision

  Claims 1–13 were not shown unpatentable under four § 103 grounds because the petitioner failed to establish the claimed control system in Outils.

  RulingsFinal written decision

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

    “evidence, and the parties’ arguments and counterarguments, we find that Petitioner fails to demonstrate, by a preponderance of the evidence, that Outils teaches or suggests the subject matter of the control system limitation, including both a first control device and a second control device. We find Petitioner fails to support its position that a person having ordinary skill in the art would have understood that the embodiment depicted in Outils’s Figure 10 includes a hold-to-run control connected to an electrical supply contactor with persuasive evidence. At the outset, we agree with Patent Owner that Petitioner does not argue that it would have been obvious to combine Outils’s disclosure of hold-to-run control component 30 controlling an electrical supply contactor from the embodiment of Figure 1 with the embodiment of Figure 10. That is, we understand that Petitioner contends that a person having ordinary skill in the art would have understood that the embodiment of Outils’s Figure 10 already had a specific type of control device—the hold-to-run control component 30 controlling an electrical supply contactor from the embodiment of Figure 1. See Pet. 36 (indicating that the first control device is Outils’s electrical supply contactor); Reply 7 (“But while the Bowden cable of Figure 1 is replaced in Figure 10, [a person having ordinary skill in the art] would understand Figure 10 must still include a user’s on/off component even though none is illustrated.”); see also Reply 9 (“Thus, [a person having ordinary skill in the art] would have understood Outils’ Figure 10 to include hold-to-run lever 30 . . . and its electric supply contactor from Figure 1”).15” slip op. at 31

  • PTAB / AIA Trials › Real party in interest / privityJoinder, grantedGranted

    “allow the petitioner to add a real party in interest.” (quoting Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364, 1374 n.9 (Fed. Cir. 2018) (en banc)). As such, a petitioner may amend its mandatory notices to add a real party-ininterest and still maintain its original filing date. See, e.g., Adello Biologics LLC v. Amgen Inc., PGR2019-00001, Paper 11, 5 (PTAB Feb. 14, 2019) (precedential) (authorizing pre-institution update to Mandatory Notices to add a RPI); Proppant Express Investments, LLC v. Oren Techs., LLC, IPR2017-01917, Paper 86, 7 (PTAB Feb. 13, 2019) (precedential) (“The Board may, under 35 U.S.C. § 312(a), accept updated mandatory notices as long as the petition would not have been time-barred under 35 U.S.C. § 315(b) if it had included the real party in interest.”) (“Proppant”). In determining whether to permit a petitioner to amend its mandatory notices to add a real party-in-interest while maintaining the original filing date, we consider “whether there have been (1) attempts to circumvent the § 315(b) bar or estoppel rules, (2) bad faith by the petitioner, (3) prejudice to the patent owner caused by the delay, or (4) gamesmanship by the petitioner.” Proppant, Paper 86, 6–7.” slip op. at 44

  • Strike new argumentNot reached

    “B. Patent Owner’s Motion to Strike Patent Owner moves to strike portions of Petitioner’s Reply as “includ[ing] numerous new improper arguments, rationales, and theories.” Paper 43, 1.21 Petitioner opposes. Paper 47. Because, even when considering Petitioner’s Reply as a whole, we conclude that Petitioner fails to demonstrate, by a preponderance of the evidence, that any of the Challenged Claims are unpatentable, we dismiss Patent Owner’s motion as moot.” slip op. at 48

  • ExcludeMotion to exclude, grantedGranted

    “The moving party has the burden of proof in showing it is entitled to the requested relief. 37 C.F.R. § 42.20(c). The standard for granting a motion to seal is “good cause.” 37 C.F.R. § 42.54. “The ‘good cause’ standard for granting a motion to seal reflects the strong public policy for making all information in an inter partes review open to the public.” Argentum Pharm. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 at 3 (PTAB Jan. 19, 2018) (informative).” slip op. at 49

  Patent outcomesUS 9,596,806 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,596,806
• One World Technologies, Inc., D/B/A/ Techtronic Industries Power Equipment v. Chervon (HK) LimitedNo claims unpatentable
  PTAB · Nov 3, 2021 · IPR2020-00886 · APJ Barry L Grossman · IPR · Final written decision

  Claims 1–20 were not shown unpatentable: the Outils, Roelle, and Matsunaga combination did not establish the claimed control system, and the second ground did not cure that deficiency.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “experience could compensate for less education.” Pet. 12 (citing Ex. 1003 ¶ 44). Mr. Reed’s opinion testimony merely repeats Petitioner’s conclusion without any analysis and without disclosing the underlying facts or data on which his opinion is based. Accordingly, his testimony on this issue is entitled to no probative weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). In our Decision to Institute, we adopted Petitioner’s proposed level of skill. Dec. Inst. 36. Patent Owner states that “[f]or purposes of these proceedings only, Patent Owner adopts Petitioner’s proposed level of ordinary skill in the art.” PO Resp. 4. Neither party provides any evidence of the factors listed above that normally inform our determination of the level of ordinary skill. For the purposes of this Decision, based on the prior art, we maintain” slip op. at 24

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

    “1. “Power Supply Circuit” Patent Owner believes that no construction is required for the term “power supply circuit” because “the construction of this term is not relevant to the issues raised herein.” PO Resp. 10. Patent Owner also asserts that the “District Court in the parties’ related district court litigation rejected Petitioner’s proposed construction.” Id. (citing Ex. 2025, 8). Petitioner disputes Patent Owner’s characterization of the District Court’s claim construction. Reply 5. Moreover, Petitioner asserts that the District Court’s construction of “power supply circuit” “would not impact the Petition’s demonstration of the challenged claims’ unpatentability.” Id. We maintain that the determination in our Decision to Institute that we need not construe this term to resolve the dispute before us.” slip op. at 25

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

    “determine that Patent Owner’s proposed construction of the “accommodating position” phrase, which is a “horizontal position over the main body” (PO Resp. 13) is not supported by the evidence. We agree with Petitioner’s proposed construction that the “accommodating position” phrase is a position relative to the main body for when the gardening tool or mower is not being used (Reply, 6), with a minor clarification. As Patent Owner argues, Petitioner’s proposed construction “is incorrect because it encompasses any handle position when the mower is turned off, and thus reads out the claimed “accommodating position.” Sur-reply 3. Our proposed construction modifies Petitioner’s construction to recognize Patent Owner’s argument. For purposes of this Decision, the phrase “accommodating position relative to the main body” in claims 1 and 11 is given its ordinary and customary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. This meaning is any position of the handle, other than the “secure position,” that prevents the motor from being started by the operation assembly and stops the motor if it is running. This is the construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention.” slip op. at 34

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

    “14 A petitioner must explain why a person having ordinary skill in the art would have combined the elements, including those disclosed in separate embodiments described in a single reference. See KSR, 550 U.S. at 418 (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”); In re Stepan Co., 868 F.3d 1342, 1345–46 n.1 (Fed. Cir. 2017) (“Whether a rejection is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.”). Petitioner does not provide any such explanation, reinforcing our understanding that Petitioner relies on the position that a person having ordinary skill in the art would have understood the embodiment of Figure 10 to include, without modification, hold-to-run control component 30 controlling an electrical supply contactor from Figure 1. light of Outils’s disclosure of control components other than an electrical supply contactor connected to hold-to-run control component 30 in the embodiment of Figure 1; (3) Petitioner’s reliance on 16 C.F.R. Part 1205 to support the understanding of a person having ordinary skill in the art; (4) Petitioner’s reliance on Outils’s disclosure at page 2, lines 24–27, to support the understanding of a person having ordinary skill in the art; and (5) Petitioner’s contention that it would have been obvious to add an operation assembly to the embodiment of Outils’s Figure 10. First, it is undisputed that the text describing Figure 10 does not mention a hold-to-run control component connected to an electrical supply contactor. See Ex. 1014, 8:22–9:13.15 Similarly, Petitioner does not direct us to, nor do we discern, any depiction associated with Outils’s Figure 10 of a hold-to-run control component connected to an electrical supply contactor. Second, in describing the embodiment of Figure 1, Outils discloses that hold-to-run control component 30 can function in one of three different ways. Control 30, through remote control cable 29, can act on (1) a motor brake, (2) a brake coupling, or (3) an electrical supply contactor. See Ex. 1014, 4:5–8; see also Pet. 31 (acknowledging that Outils’s hold-to-run control component 30 “acts on a motor brake, a brake coupling or an electrical supply contactor” (emphasis added)). Neither Petitioner nor Mr. Reed persuasively explains why a person having ordinary skill in the art would have understood the embodiment of Figure 10 to have hold-to-run control component 30 connected to an electrical supply contactor, rather 15 Outils references Figures 9 and 10 at page 7, line 15. This reference is a typographical error. The reference should be to Figures 8 and 9, which include means 4 and actuator 20. See Ex. 1014, 7:15–8:20, Figs. 8, 9; Dec. Inst. 30; Reply 9 n.5. than a motor brake or brake coupling. That is, Petitioner does not provide persuasive evidence supporting the contention that, out of the three possible control devices disclosed as connected to hold-to-run control component 30—a motor brake, a brake coupling, or an electrical supply contactor—a person having ordinary skill in the art would have understood from Outils’s disclosure that the embodiment of Figure 10 specifically includes an electrical supply contactor. There is no persuasive evidence that the embodiment of Figure 10 in Outils, which includes actuator 23 and cam 24, also includes hold-to-run control component 30 and only the electrical contactor to the exclusion of the other two control components. There also is no persuasive evidence, in this embodiment, actuator 23 and cam 24 enable, i.e. unlocks, or disables, i.e., locks, hold-to-run control component 30 and the associated electrical supply contactor from starting the motor, as required by the control system limitation.” slip op. at 48

  Patent outcomesUS 9,826,686 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,826,686
• One World Technologies, Inc., D/B/A/ Techtronic Industries Power Equipment v. Chervon (HK) LimitedNo claims unpatentable
  PTAB · Nov 3, 2021 · IPR2020-00884 · APJ James J Mayberry · IPR · Final written decision

  Claims 1–13 were not shown unpatentable because the evidence did not establish that Outils disclosed or suggested the claimed first and second control devices.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityGranted

    “In determining whether to permit a petitioner to amend its mandatory notices to add a real party-in-interest while maintaining the original filing date, we consider “whether there have been (1) attempts to circumvent the § 315(b) bar or estoppel rules, (2) bad faith by the petitioner, (3) prejudice to the patent owner caused by the delay, or (4) gamesmanship by the petitioner.” Proppant, Paper 86, 6–7.” slip op. at 44

  • Strike new argumentNot reached

    “Patent Owner moves to strike portions of Petitioner’s Reply as “includ[ing] numerous new improper arguments, rationales, and theories.” Paper 43, 1.21 Petitioner opposes. Paper 47. Because, even when considering Petitioner’s Reply as a whole, we conclude that Petitioner fails to demonstrate, by a preponderance of the evidence, that any of the Challenged Claims are unpatentable, we dismiss Patent Owner’s motion as moot.” slip op. at 48

  • ExcludeMotion to exclude, grantedGranted

    “The moving party has the burden of proof in showing it is entitled to the requested relief. 37 C.F.R. § 42.20(c). The standard for granting a motion to seal is “good cause.” 37 C.F.R. § 42.54. “The ‘good cause’ standard for granting a motion to seal reflects the strong public policy for making all information in an inter partes review open to the public.” Argentum Pharm. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 at 3 (PTAB Jan. 19, 2018) (informative).” slip op. at 49

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Not reached

    “Patent Owner argues that “[t]his proceeding should be dismissed because the assigned Administrative Patent Judges are principal officers of the United States and yet were not appointed by the President and confirmed by the Senate” in violation of the Appointments Clause. PO Resp. 52–53. We decline to address Patent Owner’s constitutional challenge except to note that the constitutionality of the appointments of the Administrative Patent Judges was addressed by the U.S. Supreme Court in United States v. Arthrex, Inc., 141 S. Ct. 1970, 1986–87, 1997 (2021).” slip op. at 50

  Patent outcomesUS 9,596,806 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,596,806
• Netflix Inc. / Hulu, LLC v. Divx, LLCNo claims unpatentable
  PTAB · Sep 9, 2021 · IPR2020-00646 · APJ Iftikhar Ahmed · IPR · Final written decision

  Claims 1, 5, 8, 9, 13–15, 18, and 21–23 were not shown unpatentable because Kaku was not established as analogous art.

  RulingsFinal written decision

  • Obviousness (§103) › Analogous artNot shown unpatentableNon analogous artNot shown unpatentable

    “A reference is considered analogous prior art: (1) if the reference is from the same field of endeavor as the claimed subject matter, or (2) if “the reference still is reasonably pertinent to the particular problem with which the inventor is involved,” even though the reference is not within the field of the inventor’s endeavor. In re Bigio, 381 F.3d at 1325. The field of endeavor test asks if the structure and function of the prior art is such that it would be considered by a person of ordinary skill in the art because of the similarity to the structure and function of the claimed invention. Bigio, 381 F.3d at 1325–27. A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem. In re Clay, 966 F.2d at 659.” slip op. at 19

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

    “Petitioner proposes constructions for three claim terms, including the term “trick play functionality.” Pet. 22–23. Patent Owner argues for construction of the related claim term “the first and second indexes enabling trick play functionality.” See PO Resp. 41–49. We determine that it is not necessary to provide an express interpretation of any of those claim terms because construction of the proposed terms does not impact our determination that Petitioner has not shown that one of the prior art references is analogous to the claimed invention. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 9

  • ExcludeMotion to exclude, deniedNot reached

    “Under the particular circumstances in this case, we need not assess the merits of Patent Owner’s Motion to Exclude. As discussed above, we have determined that Petitioner has not demonstrated by a preponderance that Kaku is analogous prior art to the ’792 patent and do not reach Petitioner’s arguments on the motivation to combine Kaku with Zetts or Seo. Accordingly, Patent Owner’s Motion to Exclude is dismissed as moot.” slip op. at 34

  • Strike new argumentNew argument disregardedGranted

    “As discussed above (supra § III.E.4.a), Petitioner’s papers fail to link Dr. Reader’s declaration testimony on the level of ordinary skill in the art to the analogous art inquiry and fail to identify a field of endeavor for the ’792 patent. We therefore agree with Patent Owner that Petitioner’s demonstrative slide 53 presents improper new arguments that have not been previously made. See Paper 38, 2 (“The parties may only rely upon evidence that has been previously submitted in the proceeding and may only present arguments that have been previously made in the submitted papers. No new evidence or arguments may be presented at the hearing.”), 5 (“Demonstratives are not a mechanism for making new arguments.”). We therefore sustain Patent Owner’s objections. We note, however, that demonstratives are not evidence. See id. at 5 (“Demonstrative exhibits used at the hearing are not evidence, nor will they be relied upon as evidence. Rather, demonstratives are visual aids to a party’s oral presentation regarding arguments and evidence previously presented and discussed in the papers”); CTPG 84 (“Demonstrative exhibits used at the final hearing are aids to oral argument and not evidence.”). In this Final Written Decision, we rely solely on the arguments properly presented in the parties’ briefs and the evidence of record, not on the demonstratives.” slip op. at 35

  Patent outcomesUS 8,472,792 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,472,792
• Favored Tech Corporation v. P2i LtdNo claims unpatentable
  PTAB · Aug 23, 2021 · IPR2020-00478 · APJ Jeffrey W Abraham · IPR · Final written decision

  Favored Tech did not prove claims 1–17 unpatentable: Baalmann did not anticipate the asserted claims, and the obviousness grounds lacked adequate disclosure or motivation with a reasonable expectation of success.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionNo construction neededGranted

    “After considering Petitioner’s arguments regarding claim 9, Patent Owner’s silence regarding claim 9, and the language in the ’070 patent itself (e.g., Ex. 1001, 11:45–52, 12:60–61), we agree with Petitioner that the term “1H, 1H, 2H, 3H-heptadecafluorodecylacylate” in claim 9 should be construed to correctly recite HDFDA (1H, 1H, 2H, 2H-heptadecafluorodecylacrylate). The error Petitioner identifies is conspicuous and undisputed, and the intrinsic record does not suggest a different interpretation. Fitbit, Inc. v. Valencell, Inc., 964 F.3d 1112, 1119–20 (Fed. Cir. 2020); Novo Industries, L.P. v. Micro Molds Corp., 350 F.3d 1348, 1357 (Fed. Cir. 2003). Additionally, after reviewing the parties’ remaining claim construction arguments and evidence, we determine that we do not need to expressly construe any other terms for purposes of this Decision because, as addressed in detail below, we find Petitioner’s showings deficient for reasons that do not depend on the construction of any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 6

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art in the field of the ’070 patent would have had “at least a bachelor’s degree in a field such as chemistry, physics, or chemical engineering, as well as at least two years of experience with plasma-polymerization techniques.” Pet. 14 (citing Ex. 1002 ¶¶ 26–31). Patent Owner agrees with this proposed definition “with the understanding that ‘experience with plasma-polymerization techniques’ includes plasma-enhanced chemical vapor deposition (PECVD) techniques.” PO Resp. 9 (citing Ex. 2010 ¶ 20; Ex. 1002 ¶¶ 12, 63). In light of the record before us, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art. As Patent Owner points out, Dr. Gleason states that PECVD is a form of plasma polymerization, and thus the parties agree that experience with plasma-polymerization techniques would include PECVD. PO Resp. 9; Ex. 1002 ¶ 63. The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner. Petitioner has failed to demonstrate adequately that each and every element in claim 1, arranged as recited in the claim, is found in a single prior art reference. NetMoneyIN, 545 F.3d at 1369; Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Here, Petitioner combines several different teachings from Baalmann to support its anticipation argument. For example, Petitioner relies on the “evacuable chamber with a volume of 1 m3” from Baalmann’s Example 1, but not the power (2kW) expressly disclosed as being used with that reactor of Example 1. Ex. 1004 ¶ 47. With regard to power density, Petitioner relies on Baalmann’s general disclosure that “[t]he electrical power input per chamber volume is set between 0.5 kilowatt/m3 and 5 kilowatt/m3.” Ex. 1004 ¶ 20. As Patent Owner points out, however, that power density range is not tied to any particular reactor volume or plasma zone volume. PO Resp. 19. Baalmann also fails to expressly disclose the plasma zone volume of the reactor in Example 1. See Ex. 1004 ¶¶ 47–48. To attempt to overcome this absence of an express disclosure, Petitioner argues that, for the reactor used in Example 1, the plasma zone volume and reactor volume are the same based on the configuration of the electrodes in the reactor. Pet. 24–25. Baalmann, however, does not expressly disclose the electrode configuration of the reactor in Example 1. See Ex. 1004 ¶¶ 47–48. Instead, Petitioner relies on Baalmann’s general disclosure of an embodiment wherein one electrode is formed by the chamber wall itself. Pet. 24–25; Ex. 1004 ¶¶ 35, 61. In so doing, Petitioner ignores the fact that Baalmann also states that “[t]wo opposite rod-shaped electrodes may also be used.” Ex. 1004 ¶ 35. In view of this, we disagree with Petitioner’s conclusion that a person of ordinary skill in the art “would have understood that chamber to be configured as described throughout the rest of the specification: with the chamber wall serving as one of the electrodes.” Pet. 24. Even if we were persuaded by Petitioner’s argument, the fact remains that Petitioner’s anticipation challenge is based on the combination of different features disclosed in separate portions of Baalmann. “Such picking and choosing . . . has no place in the making of a 102, anticipation rejection.” In re Arkley, 455 F.2d 586, 587–88 (CCPA 1972) (cited with approval in Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1083 (Fed. Cir. 2008)); see also Microsoft Corp. v. Biscotti, Inc., 878 F.3d 1052, 1069 (Fed. Cir. 2017) (stating that anticipation is not proven by multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention).” slip op. at 12

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

    “For all of the foregoing reasons, we are not persuaded by Petitioner’s argument that a person of ordinary skill in the art would have inferred the volume of the plasma zone10 in Coulson is 470 cm3 based on Coulson’s disclosure of a “glow discharge reactor” having a volume of 470 cm3. Pet. 38; Reply 15–16. In view of this, we are likewise not persuaded that Coulson discloses a power density of 85.1 W/m3, because Petitioner’s 9 Dr. Gleason confirmed that she did not perform any experiments to verify her opinions regarding Coulson’s plasma zone. Ex. 2017, 80:10–18. 10 As noted above, Petitioner presented its argument in the context of its proposed construction of plasma zone. Petitioner did not present an alternative argument supported by sufficient evidence addressing the volume of Coulson’s plasma zone based on Patent Owner’s proposed construction of plasma zone. Accordingly, we agree with Patent Owner’s assertion that we do not need to expressly construe the term plasma zone to resolve this issue. Sur-reply 1. argument that Coulson discloses this power density is based on its assertion that Coulson has a plasma zone volume of 470 cm3. Pet. 38. This finding is fatal to Petitioner’s obviousness challenge of claim 1 based on the combined teachings of Baalmann and Coulson because Coulson’s purported disclosure of using a power density of 85.1 W/m3 is an essential component of Petitioner’s obviousness challenge. An obviousness determination requires finding both “that a skilled artisan would have been motivated to combine the teachings of the prior art . . . and that the skilled artisan would have had a reasonable expectation of success in doing so.” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367-68 (Fed. Cir. 2016). In attempting to establish a person of ordinary skill in the art would have had reason to combine the teachings of Baalmann and Coulson, and would have had a reasonable expectation of success in doing so, Petitioner repeatedly refers to using Coulson’s optimized reaction conditions, including power density, in Baalmann’s larger reactor. Pet. 48 (stating that a person of ordinary skill in the art “would have been motivated to maintain the same or similar reaction conditions within a larger reaction chamber that were present in Coulson’s chamber during Coulson’s reported plasma polymerization reactions, including power density and pressure, to preserve the same effective results.”), 48–49 (“That would have included motivation to maintain Coulson’s disclosed power density when scaling up to a larger reaction volume to preserve the beneficial results Coulson reported at that optimized power density.”); Reply 23 (referring to the “straightforward, compelling obviousness case set forth in the petition” that a person of ordinary skill in the art “would have expected to succeed performing Coulson’s reactions on a larger scale in view of Baalmann”); 23 (“The petition explained why a POSA would have modified Baalmann to use Coulson’s HDFDA monomer and reaction conditions to produce coatings with a reasonable expectation of success” ), 24 (stating the Petition “explained why a POSA would have expected success using known parameters from Coulson in an established large-scale apparatus”). During the oral hearing, counsel for Petitioner confirmed its obviousness positions depend on using Coulson’s power density. Tr. 20:10–21:16. Accordingly, Petitioner’s failure to demonstrate adequately that Coulson discloses or suggests a power density of 85.1 W/m3 undermines its reason to combine and reasonable expectation of success arguments. Petitioner’s argument that Baalmann discloses the claimed power” slip op. at 26

  Patent outcomesUS 8,389,070 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,389,070
• Unified Patents Inc. v. Divx, LLCNo claims unpatentable
  PTAB · Feb 8, 2021 · IPR2019-01379 · APJ Iftikhar Ahmed · IPR · Final written decision

  Claims 1 and 17 were not shown unpatentable over Kim and Huang because Petitioner did not establish an adequate motivation to combine their teachings.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art “would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related subject, and two to three years of work experience in image and/or video processing.” Pet. 15–16 (citing Ex. 1005 ¶ 42). Patent Owner neither comments on that proposal, nor proposes an alternative level of ordinary skill in the art. See generally PO Resp. 5 The burden of showing something by a preponderance of the evidence requires the trier of fact to believe that the existence of a fact is more probable than its nonexistence. Concrete Pipe & Prods. of Cal., Inc. v. Constr. Laborers Pension Tr. for S. Cal., 508 U.S. 602, 622 (1993). Because Petitioner’s proposed definition is consistent with the cited prior art, we apply it for purposes of this Decision. In our view, moreover, 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 prior art itself can reflect an appropriate level of skill in the art at the time of the invention).” slip op. at 9

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

    “00052, which also involves the ’651 patent, the Board construed the term “level of detail” as “level of change of visual elements across adjacent pixels,” and that the same construction should apply here. PO Resp. 58–60 (citing IPR2020-00052, Paper 42). Petitioner does not propose a construction for that term, but argues that “the combined Kim and Huang teachings would determine the level of detail for adjacent pixels under Patent Owner’s ‘adjacent pixels’ construction.” Pet. Reply 5–11. Because our ultimate decision does not rest on the construction of that claim term, we do not construe the term in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review). As part of our obviousness analysis, we address additional claim construction arguments regarding the “determining” limitation. See infra § III.E.1.a.” slip op. at 10

  • ExcludeMotion to exclude, deniedDenied

    “We agree with Patent Owner that these exhibits represent expressions of opinion of unnamed users that Patent Owner relies on to show cotemporaneous praise existed. These exhibits are cited in the Hanson Declaration only as evidence of industry praise, i.e., to support testimony based on his personal knowledge. See Ex. 2045 ¶ 51. And although Mr. Hanson quotes statements from these exhibits in his declaration, their relevance lies in that they allegedly reflect praise for DivX’s deblocking method. For example, the statement by user “temperance”—that Petitioner objects to as being relied on for the truth of the matter asserted (Paper 46, 1– 2)—is offered to show that “[t]here was plenty of healthy debate on the boards about the quality of the new version of the codec,” and “many commenters specifically praised the deblocking.” See Ex. 2045 ¶ 46. Moreover, it is clear that these are merely opinions of online users, not factual assertions. See id. (quoting temperance: “IMHO, DivX 6 deblocking is better (for metrics and eyes) than xvid’s”) (emphasis added); see Sonos, slip op. at 7 (separating admissible expressions of opinions that constitute praise from bare factual assertions). Other statements that Petitioner objects to (Paper 46, 2) are similarly opinions of online users, not factual assertions that Patent Owner relies upon for the truth of the matter stated therein. We are therefore not persuaded that Exhibits 2018–2030 and 2032–2033 contain inadmissible hearsay.11 See Cisco Sys., Paper 41 at 50–51 (allowing exhibits cited only as evidence of industry praise); Quanergy Sys., Inc. v. Velodyne Lidar, Inc., IPR2018-00255, 2020 WL 2595492, at *2 (PTAB May 21, 2020) (citing Asetek Danmark A/S v. CMI USA, Inc., 13-CV-00457-JST, 2014 WL 12644295, at *2 (N.D. Cal. Nov. 19, 2014)).” slip op. at 55

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We agree with Patent Owner that the Petition does not detail Petitioner’s newly proposed interpretation of this claim limitation. See Pet. 29–36 (arguing only that a person of ordinary skill in the art would have recognized that Kim determines the level of detail for a region comprising an 8 x 8 block of pixels of a reconstructed video frame). On the contrary, the Petition argued: [T]he prior art cited in this Petition teaches and suggests exactly what is claimed and what allegedly distinguished the claims from Kim II: determining the level of detail of a region that includes pixels from multiple rows and multiple columns that encompass pixels immediately adjacent to at least two sides of the block boundary, and selecting a filter to apply.” Pet. 18 (emphasis added).6 Under these circumstances, we consider Petitioner’s new argument waived. See 37 C.F.R. § 42.23(b); see also Intelligent Bio-Sys., 821 F.3d at 1369 (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ 6 Petitioner refers to a different prior art reference, U.S. Patent No. 6,983,079, cited by the examiner during the prosecution of the ’651 patent, as Kim II. the ‘evidence that supports the grounds for the challenge to each claim.’”) (citing 35 U.S.C. § 312(a)(3)).” slip op. at 23

  Patent outcomesUS 8,139,651 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,139,651
• Precision Planting, LLC / Agco Corp. v. Deere & CompanyNo claims unpatentable
  PTAB · Dec 15, 2020 · IPR2019-01055 · APJ Timothy J Goodson · IPR · Final written decision

  Claims 1–8, 10, 12–17, 19, and 20 were not shown unpatentable over Hedderwick, Koning, and Benac because Petitioner did not establish motivation to combine or a reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedPetitioner expert discountedDecided for patent owner

    “would have had either: (1) a bachelor’s degree plus four years of experience in mechanical engineering, agricultural engineering, or a related field; or (2) a master’s degree plus two years of experience in mechanical engineering, agricultural engineering, or a related field.” Pet. 45 (citing Ex. 1002 ¶¶ 19–20). In the testimony the Petition cites in support of that proposal, Mr. Prairie lists factors that are typically considered in assessing the level of ordinary skill in the art, and then states “[b]ased on these factors as well as my experience and expertise,” his opinion of the level of ordinary skill in the art is the same as Petitioner proposes. Ex. 1002 ¶¶ 19–20. This conclusory testimony is entitled to little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). slip op. at 12

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

    “We determine that no terms require express construction to resolve the parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claim terms need only be construed “to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 14

  • Obviousness (§103) › Analogous artNot reached

    “Patent Owner counters that Koning does not qualify as analogous art and, relatedly, that judicial estoppel bars Petitioner from contending otherwise. PO Resp. 7–17. Patent Owner further argues that an ordinarily skilled artisan would not have been motivated to combine Koning’s belt with Hedderwick and Benac, and would not have expected that combination to succeed. Id. at 18–33; Sur-Reply 13–19. Patent Owner also challenges the motivation and reasonable expectation of success for the incorporation of Owner argues that incorporating Benac’s paddle wheel would not yield a “nip” as claimed. PO Resp. 49–61; Sur-Reply 29. Patent Owner also submits evidence of objective indicia of nonobviousness. PO Resp. 61–98; Sur-Reply 2–10. 2. Motivation to Combine and Reasonable Expectation of Success Of the disputed issues summarized in the preceding section, our analysis focuses on whether an ordinarily skilled artisan would have been motivated to combine the references in the manner Petitioner proposes and would have reasonably expected success in doing so. Because those issues are dispositive of Petitioner’s challenge, it is unnecessary for us to resolve the other disputed issues. See, e.g., Adidas AG v. Nike, Inc., 963 F.3d 1355, 1359 (Fed. Cir. 2020) (affirming Board’s determination that claims were not shown to be obvious because the petitioner had not demonstrated that an ordinarily skilled artisan would have been motivated to combine the references); Samsung Electronics Co. v. Elm 3DS Innovations, LLC, 925 F.3d 1373, 1383 (Fed. Cir. 2019) (determining that it is unnecessary to reach other issues when reasonable expectation of success is dispositive).” slip op. at 22

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

    “between the references’ use of a brush belt as an endless member and paddle wheels versus the proposed combination. Moreover, Patent Owner points out problems ordinarily skilled artisans would have encountered in attempting to combine the references as Petitioner proposes. Petitioner does not persuasively explain how those issues could have been overcome, and instead simply asserts, essentially, that ordinarily skilled artisans could have figured it out. See, e.g., Ex. 1135 ¶ 78 (“[A] person of ordinary skill in the art would have determined through no more than routine experimentation how to orient Benac’s paddle wheel so that it could operate with Koning’s brush belt bristles to pinch seeds from the seed meter.”). It is Petitioner’s burden to establish that ordinarily skilled artisans would have been motivated to combine the references in the proposed manner and would have reasonably expected success in doing so. See 35 U.S.C. § 316(e); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016). Petitioner’s arguments and evidence do not carry that burden.” slip op. at 28

  Patent outcomesUS 9,699,955 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,699,955
• Precision Planting, LLC / Agco Corp. v. Deere & CompanyNo claims unpatentable
  PTAB · Nov 30, 2020 · IPR2019-01044 · APJ Timothy J Goodson · IPR · Final written decision

  Claims 1–8 were not shown unpatentable under § 103 over Hedderwick, Koning, and Benac because Petitioner did not establish motivation to combine or a reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedPetitioner expert discountedDecided for patent owner

    “have had either (1) a bachelor’s degree plus four years of experience in mechanical engineering, agricultural engineering, or a related field or (2) a master’s degree plus two years of experience in mechanical engineering, agricultural engineering, or a related field.” Pet. 42 (citing Ex. 1002 ¶¶ 19– 20). In the testimony the Petition cites in support of that proposal, Mr. Prairie lists factors that are typically considered in assessing the level of ordinary skill in the art, and then states “[b]ased on these factors together with my experience and expertise,” his opinion of the level of ordinary skill in the art is the same as Petitioner proposes. Ex. 1002 ¶¶ 19–20. This conclusory testimony is entitled to little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 12

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

    “construed 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).” See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)).6 That standard “includ[es] construing 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.; see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). We determine that no terms require express construction to resolve the parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claim terms need only be construed “to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review). V. OBVIOUSNESS OVER HEDDERWICK, KONING, AND BENAC” slip op. at 14

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Patent Owner’s expert, Dr. Glancey, explains that [i]f a wheel is used to load and place seeds within a moving belt with brush hairs, the wheel must be able to disengage from seeds while the seeds remain in between brush hairs. If the wheel maintains contact with the seed after the seed has moved into the brush hairs, the wheel will continue to apply force to the seed and eject or remove the seed from the profile of the brush hairs . . . . Ex. 2200 ¶ 223. Dr. Glancey testifies, credibly, that in Petitioner’s combination, seeds would have been rejected from the belt because, as the paddle wheel rotates, seeds “would be scooped through the belt.” Id. ¶ 225.” slip op. at 31

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

    “way the references use endless members in the form of brush belts and paddle wheels, versus the way Petitioner uses those components in the proposed combination. Contrary to Petitioner’s and Mr. Prairie’s assertions, the proposed combination does not merely apply known techniques to a known device, because none of the cited references use brush belts and paddle wheels in the manner Petitioner proposes. As discussed in greater detail below, Benac teaches that a paddle wheel can be used to ensure that seeds jammed in vacuum holes are released reliably, and then dropped to the ground. Benac does not address brush belts as an endless member and, therefore, does not teach that paddle wheels can be used to guide seeds into the bristles of a brush belt, as Petitioner proposes. See Pet. 64. And Koning does not teach a brush belt that captures seeds released from above, as Petitioner and Mr. Prairie propose. See Pet. 61–62; Ex. 1002 ¶ 104; Ex. 2193, 190:10–191:3; Ex. 2263, 167:21–170:9. Rather, Koning’s brush belt maintains the relative position of potatoes lying on a conveying surface by holding them from above while the conveyor moves them to the furrow. Ex. 1004, 3:16–24, 5:3–14, Fig. 4. Petitioner’s arguments do not adequately account for these differences between the references’ use of a brush belt as an endless member and paddle wheels versus the proposed combination. Moreover, Patent Owner points out problems ordinarily skilled artisans would have encountered in attempting to combine the references as Petitioner proposes. Petitioner does not persuasively explain how those issues could have been overcome, and instead simply asserts, essentially, that ordinarily skilled artisans could have figured it out. See, e.g., Ex. 1135 ¶ 80. It is Petitioner’s burden to establish that ordinarily skilled artisans would have been motivated to combine the success in doing so. See 35 U.S.C. § 316(e); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016). Petitioner’s arguments and evidence do not carry that burden.” slip op. at 28

  Patent outcomesUS 8,813,663 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,813,663

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.