- PTAB · Nov 20, 2024 · IPR2024-00797 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted inter partes review of claims 14–16 and 18–20 on both asserted § 103 grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We conclude that the record demonstrates a reasonable likelihood that Petitioner would prevail with respect to challenged claims 14–16 and 18–20 for the following reasons.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that A POSITA as of the claimed priority date would have had a Bachelor’s degree in biomedical engineering, electrical or computer engineering, computer science, or a related or equivalent field and two or more years of experience researching, developing, designing and/or evaluating (or supervising the same) in wireless communication related to medical devices or equivalent experience. A person with less or different education but more relevant practical experience, or vice versa, may also meet this standard. The prior art also evidences the level of skill in the art.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownPlain and ordinary meaningDecided for petitioner
“We determine that “authentication” and “identification” are well- understood and widely used terms in communications (including wireless), and these terms do not require any specialized constructions for this proceeding. The ordinary and customary meaning of “authentication” is verifying the identity of communicating devices or users, or, in other words, determining that a device or user is what or who they represent themselves to be. See, e.g., Ex. 1003 ¶¶ 30, 32; Ex. 2002, 175.” slip op. at 12
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Petitioner asserts that “Yarger and Love are analogous art because they are both related to aspects of securely communicating analyte measurements over wireless links in CGM systems.” Id. at 20–21 (citing Ex. 1005, code (57); Ex. 1006, code (57); Ex. 1003 ¶ 69; In re Bigio, 381 F.3d 1320, 1325–27 (Fed. Cir. 2004)). Patent Owner does not dispute Petitioner’s contentions that Yarger and Love are analogous, and that a POSITA would have been motivated to combine them with a reasonable expectation of success. See generally Prelim. Resp. We determine that Petitioner shows sufficiently that Yarger and Love are analogous and that a POSITA would have been motivated to combine them with a reasonable expectation of success. Specifically, Yarger and Love are directed to similar glucose monitoring systems and are thus in the same field of endeavor and address the same problems. See, e.g., Pet. 20– 21; Ex. 1005, codes (54, 57), ¶ 1; Ex. 1006, codes (54, 57), ¶ 2. Since Yarger already monitors and displays glucose levels, including clinically significant conditions such as hypoglycemia or hyperglycemia, adding Love’s teaching to generate alarms and notifications for such conditions would improve Yarger’s similar system in the same way as taught by Love. See, e.g., Pet. 19–21; Ex. 1005 ¶¶ 3, 17; Ex. 1006, codes (54, 57), ¶¶ 70, 78. Since this modification merely requires “routine programming” adding logic to compare glucose levels and generate an alarm when a clinically significant threshold is exceeded, a POSITA would have had a reasonable expectation of success in making the modification. See, e.g., Pet. 20; Ex. 1003 ¶ 73. “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417.” slip op. at 18
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,375,222 - PTAB · Nov 19, 2024 · IPR2024-00853 · APJ Frederick C Laney · IPR · Institution
The Board instituted IPR on all challenged claims, finding a reasonable likelihood that Abbott would show claims 1 and 12 unpatentable over Gawlick and Valdes.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“known to combine Gawlick and Valdes with a reasonable expectation of success, and how that combination discloses or suggests each limitation of claims 1 and 12. Accordingly, we determine that the Petition establishes there is a reasonable likelihood Petitioner would prevail in showing that claims 1 and 12 of the ’204 patent are unpatentable in view of Gawlick and Valdes.” slip op. at 33
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that A person of ordinary skill in the art (“POSITA”) as of December 2012 would have had a Bachelor’s degree in biomedical engineering, chemical engineering, mathematics, statistics, or computer science (or a related or equivalent field), and two or more years of experience researching, developing, designing and/or evaluating (or supervising the same) systems for measuring and monitoring (including remote monitoring) of a host’s analyte data, or similar data, or equivalent experience. A person with less or different education but more relevant practical experience, or vice versa, may also meet this standard. Each of these POSITAs may be part of an interdisciplinary team with others having the relevant experience set forth above and/or with clinicians involved in diagnosing, treating, monitoring, and managing patients using medical devices.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner has carried its burden for this stage of the proceeding to establish that a skilled artisan would have considered it obvious to integrate Valdes’s disclosed system and method for communicating glucose concentration information between devices into Gawlick’s disclosed system and method for adjusting an alert rule used to indicate a status of a patient. Petitioner’s evidence supports sufficiently that the proposed Gawlick and Valdes combination is simply an arrangement of old elements with each functioning as intended and yields no more than would have been expect from such an arrangement. Petitioner’s cited evidence shows: (1) Gawlick teaches a medical alert system 100 that includes a patient monitor system 106, which broadly covers one or more electronic devices that continuously, periodically, and/or upon request monitor the physiological characteristics of patients; (2) Gawlick teaches a medical alert system 100 that uses the patient monitor system to monitor blood glucose physiological characteristics and allows for adjustable alert rules to be established to indicate the status of a patient’s blood glucose; and (3) Valdes teaches a system for communicating glucose concentration information between devices using a receiver designed to transfer information related a patient’s blood glucose physiological characteristics continuously monitored by a sensor to a network system. See Ex. 1003 ¶¶ 101–109; Ex. 1005 ¶¶ 1, 20, 21, 37, 39, 112–113, Figs. 16, 17, 26, 27; Ex. 1007 ¶¶ 4, 20, 39, 59, 92–93, 97, 110, 118, 177. Recognizing that a skilled artisan is of “ordinary creativity” and “not an automaton” (KSR, 550 U.S. at 421), Petitioner’s cited evidence demonstrates that Valdes’s disclosed system is an example of a patient monitor system that Gawlick suggests integrating into its disclosed medical alert system. As such, we are persuaded Valdes and Gawlick provide sufficient support for Petitioner’s contention that integrating Valdes’s system into Gawlick’s system is nothing more than combining known elements in a known way, which would produce predictable results (i.e., allowing Gawlick’s system to receive and monitor data associated with the physiological characteristics of a patient’s blood glucose).” slip op. at 18
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,213,204 - Weber, Inc. v. Provisur Technologies, Inc.Some claims unpatentablePTAB · Oct 21, 2024 · IPR2020-01557 · APJ Jon M Jurgovan · IPR · Remand
On remand, claims 1–4 and 8–11 were held obvious; claims 5–7 were not shown unpatentable because the asserted combinations did not establish claim 5’s drive-roller limitation.
RulingsRemand decision- RemandFwd mixedMixed
“Specifically, the Federal Circuit “reverse[d] the Board’s finding that Weber’s operating manuals do not qualify as printed publications.” Weber, 1 Patent Owner also submitted redacted versions of its Preliminary Response, Response, and Sur-Reply. Papers 8, 24, 48. The redactions relate to information subject to our Protective Orders. Papers 13, 57. 92 F.4th at 1069. The Federal Circuit further held that the prior art disclosed the “disposed over” limitation of claim 1 as properly construed, as well as the “stop gate” limitation of claim 1. Weber, 92 F.4th at 1069–1072. In addition, the Federal Circuit indicated it had considered Petitioner’s remaining arguments and found them unpersuasive. Weber, 92 F.4th at 1072. Accordingly, the Federal Circuit vacated our determinations that Petitioner failed to establish unpatentability of claims 1–11 of the ’812 patent, and remanded the case to the Board for further proceedings consistent with its opinion. Weber, 92 F.4th at 1072.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. LEVEL OF ORDINARY SKILL IN THE ART Petitioner proposes that a person of ordinary skill in the art would have had “(1) a bachelor’s degree (or equivalent) in mechanical engineering (or a similar field) and at least two years of experience working on food processing and/or packaging systems (or in a similar field)” or “(2) at least seven years of experience working on food processing and/or packaging systems (or in a similar field).” Pet. 20 (citing Ex. 1003 ¶¶ 26–27). Patent Owner does not contest Petitioner’s definition or provide its own proposal. For purposes of this Decision, we adopt Petitioner’s proposal because Petitioner’s proposed definition is consistent with the level of skill demonstrated in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- Prior constructionPrior construction adoptedDecided for petitioner
“disposed over the food article loading apparatus.” The Federal Circuit reversed the construction set forth in the prior FWD and held that the “disposed over” limitation “requires only that the feed apparatus be generally positioned above the loading apparatus.” Weber, 92 F.4th at 1070. We follow the Federal Circuit’s construction of “disposed over” in this decision. We need not provide an express construction for any other claim terms to resolve the dispute before us. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy). We note, though, that in reaching our conclusion, we apply the ordinary and customary meaning to all claim terms. 37 C.F.R. § 42.100(b) (2019).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“We agree with Petitioner that the preamble of claim 1 is disclosed by each of the slicing machines disclosed in 2006 904 Operating Manual, Lindee, and Sandberg. Thus, we need not and do not decide whether the preamble is limiting.” slip op. at 19
Patent outcomesUS 10,639,812 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,639,812 - Weber, Inc. v. Provisur Technologies, Inc.All claims unpatentablePTAB · Oct 21, 2024 · IPR2020-01556 · APJ Jon M Jurgovan · IPR · Remand
On remand, claims 1–16 are unpatentable as obvious over both the 2006 904 Operating Manual and Lindee, and the 2010 904 Operating Manual and Lindee.
RulingsRemand decision- RemandOther
“Federal Circuit (“Federal Circuit”) on March 18, 2022. Paper 68. On February 24, 2024, the Federal Circuit reversed-in-part, vacated-in-part, and remanded the prior FWD. Weber, Inc. v. Provisur Tech., Inc., 92 F.4th 1059 (Fed. Cir. 2024). Specifically, the Federal Circuit “reverse[d] the Board’s finding that Weber’s operating manuals do not qualify as printed publications.” Weber, 92 F.4th at 1069. The Federal Circuit further held that the prior art disclosed the “disposed over” limitation of claim 1 as properly construed, as well as 1 Patent Owner also submitted redacted versions of its Preliminary Response, Response, and Sur-Reply. Papers 8, 24, 49. The redactions relate to information subject to our Protective Orders. Papers 12, 58. the “stop gate” limitation of claim 1. Weber, 92 F.4th at 1069–1072. In addition, the Federal Circuit indicated it had considered Petitioner’s remaining arguments and found them unpersuasive. Weber, 92 F.4th at 1072. Accordingly, the Federal Circuit vacated our determinations that Petitioner failed to establish unpatentability of claims 1–16 of the ’436 patent, and remanded the case to the Board for further proceedings consistent with its opinion. Weber, 92 F.4th at 1072.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. LEVEL OF ORDINARY SKILL IN THE ART Petitioner proposes that a person of ordinary skill in the art (“POSA”) would have had “(1) a bachelor’s degree (or equivalent) in mechanical engineering (or a similar field) and at least two years of experience working on food processing and/or packaging systems (or in a similar field)” or “(2) at least seven years of experience working on food processing and/or packaging systems (or in a similar field).” Pet. 18 (citing Ex. 1003 ¶ 26). Patent Owner does not contest Petitioner’s definition or provide its own proposal. For purposes of this Decision, we adopt Petitioner’s proposal because Petitioner’s proposed definition is consistent with the level of skill demonstrated in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“III. CLAIM CONSTRUCTION Claim 1’s limitation 1.2 and claim 9’s limitation 9.3 recite in part “a food article feed apparatus disposed over the food article loading apparatus.” The Federal Circuit reversed the construction set forth in the prior FWD and held that the “disposed over” limitation “requires only that the feed apparatus be generally positioned above the loading apparatus.” Weber, 92 F.4th at 1070. We follow the Federal Circuit’s construction of “disposed over” in this decision. We need not provide an express construction for any other claim terms to resolve the dispute before us. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy). We note, though, that in reaching our conclusion, we apply the ordinary and customary meaning to all claim terms. 37 C.F.R. § 42.100(b) (2019).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“In light of the Federal Circuit’s decision, we agree with Petitioner that the structure and function of the 2006 904 Operating Manual’s product holder and Lindee’s grippers are similar in that they serve to grip food product and guide it to the slicing station. See, e.g., Ex. 1005, 23; Ex. 1006, 18:20–35, Fig. 7A. The two devices differ in their actuation—the 2006 904 Operating Manual uses a ball screw spindle actuator to drive the product holder along the feed path, whereas Lindee uses a timing belt 334 to drive its grippers 151 along the feed path. Ex. 1005, 273–274; Ex. 1006, 18:33–34, Fig. 7A. However, Petitioner presented evidence that “unlike ball screws, belt drives do not require periodic lubrication with grease or exhibit backlash when they change direction.” Ex. 1003 ¶ 137. In addition, Petitioner demonstrates that a POSA at the time would have understood that conveyor belts like Lindee’s can be easily cleaned. Ex. 1051 ¶¶ 50–54. Petitioner further asserted that conveyor belts are easy to maintain at low cost. Id. citing ¶¶ 55–58. We agree with Petitioner that, at least for some scenarios, including those that Petitioner specifies, a POSA would have seen that there were advantages to using Lindee’s timing belt rather than the 2006 904 Operating Manual’s ball-screw to drive food article grippers. Petitioner has demonstrated a POSA would have been motivated to combine Lindee’s beltdriven grippers in the 2006 904 Operating Manual’s food slicer notwithstanding Patent Owner’s arguments to the contrary.” slip op. at 39
Patent outcomesUS 10,625,436 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,625,436 - Weber, Inc. v. Provisur Technologies, Inc.All claims unpatentablePTAB · Oct 21, 2024 · IPR2020-01556 · APJ Jon M Jurgovan · IPR · Remand
On remand, the Board held claims 1–16 unpatentable as obvious over the 2006 904 Operating Manual and Lindee, and separately over the 2010 904 Operating Manual and Lindee.
RulingsRemand decision- RemandOther
“Specifically, the Federal Circuit “reverse[d] the Board’s finding that Weber’s operating manuals do not qualify as printed publications.” Weber, 92 F.4th at 1069. The Federal Circuit further held that the prior art disclosed the “disposed over” limitation of claim 1 as properly construed, as well as 1 Patent Owner also submitted redacted versions of its Preliminary Response, Response, and Sur-Reply. Papers 8, 24, 49. The redactions relate to information subject to our Protective Orders. Papers 12, 58. the “stop gate” limitation of claim 1. Weber, 92 F.4th at 1069–1072. In addition, the Federal Circuit indicated it had considered Petitioner’s remaining arguments and found them unpersuasive. Weber, 92 F.4th at 1072. Accordingly, the Federal Circuit vacated our determinations that Petitioner failed to establish unpatentability of claims 1–16 of the ’436 patent, and remanded the case to the Board for further proceedings consistent with its opinion. Weber, 92 F.4th at 1072.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. LEVEL OF ORDINARY SKILL IN THE ART Petitioner proposes that a person of ordinary skill in the art (“POSA”) would have had “(1) a bachelor’s degree (or equivalent) in mechanical engineering (or a similar field) and at least two years of experience working on food processing and/or packaging systems (or in a similar field)” or “(2) at least seven years of experience working on food processing and/or packaging systems (or in a similar field).” Pet. 18 (citing Ex. 1003 ¶ 26). Patent Owner does not contest Petitioner’s definition or provide its own proposal. For purposes of this Decision, we adopt Petitioner’s proposal because Petitioner’s proposed definition is consistent with the level of skill demonstrated in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“III. CLAIM CONSTRUCTION Claim 1’s limitation 1.2 and claim 9’s limitation 9.3 recite in part “a food article feed apparatus disposed over the food article loading apparatus.” The Federal Circuit reversed the construction set forth in the prior FWD and held that the “disposed over” limitation “requires only that the feed apparatus be generally positioned above the loading apparatus.” Weber, 92 F.4th at 1070. We follow the Federal Circuit’s construction of “disposed over” in this decision. We need not provide an express construction for any other claim terms to resolve the dispute before us. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy). We note, though, that in reaching our conclusion, we apply the ordinary and customary meaning to all claim terms. 37 C.F.R. § 42.100(b) (2019).” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“IV. CITED PRIOR ART REFERENCES In the prior FWD, we decided that the 2006 904 Operating Manual and 2010 904 Operating Manual were not “printed publications” under 35 U.S.C. § 311(b). Paper 67, 25–38. The Federal Circuit reversed that determination, and held that these manuals are “printed publications.” Weber, 92 F.4th at 1069. In accord with the Federal Circuit’s decision, we now address the content of these publications in combination with Lindee.” slip op. at 11
Patent outcomesUS 10,625,436 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,625,436 - Weber, Inc. v. Provisur Technologies, Inc.Some claims unpatentablePTAB · Oct 3, 2024 · IPR2020-01557 · APJ Jon M Jurgovan · IPR · Remand
Claims 1–4 and 8–11 are unpatentable as obvious; claims 5–7 were not shown unpatentable because the asserted combinations did not establish claim 5’s recessed-diameter limitation.
RulingsRemand decision- RemandOther
“Specifically, the Federal Circuit “reverse[d] the Board’s finding that Weber’s operating manuals do not qualify as printed publications.” Weber, 1 Patent Owner also submitted redacted versions of its Preliminary Response, Response, and Sur-Reply. Papers 8, 24, 48. The redactions relate to information subject to our Protective Orders. Papers 13, 57. 92 F.4th at 1069. The Federal Circuit further held that the prior art disclosed the “disposed over” limitation of claim 1 as properly construed, as well as the “stop gate” limitation of claim 1. Weber, 92 F.4th at 1069–1072. In addition, the Federal Circuit indicated it had considered Petitioner’s remaining arguments and found them unpersuasive. Weber, 92 F.4th at 1072. Accordingly, the Federal Circuit vacated our determinations that Petitioner failed to establish unpatentability of claims 1–11 of the ’812 patent, and remanded the case to the Board for further proceedings consistent with its opinion. Weber, 92 F.4th at 1072.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. LEVEL OF ORDINARY SKILL IN THE ART Petitioner proposes that a person of ordinary skill in the art would have had “(1) a bachelor’s degree (or equivalent) in mechanical engineering (or a similar field) and at least two years of experience working on food processing and/or packaging systems (or in a similar field)” or “(2) at least seven years of experience working on food processing and/or packaging systems (or in a similar field).” Pet. 20 (citing Ex. 1003 ¶¶ 26–27). Patent Owner does not contest Petitioner’s definition or provide its own proposal. For purposes of this Decision, we adopt Petitioner’s proposal because Petitioner’s proposed definition is consistent with the level of skill demonstrated in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- Prior constructionPrior construction adoptedDecided for petitioner
“disposed over the food article loading apparatus.” The Federal Circuit reversed the construction set forth in the prior FWD and held that the “disposed over” limitation “requires only that the feed apparatus be generally positioned above the loading apparatus.” Weber, 92 F.4th at 1070. We follow the Federal Circuit’s construction of “disposed over” in this decision. We need not provide an express construction for any other claim terms to resolve the dispute before us. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy). We note, though, that in reaching our conclusion, we apply the ordinary and customary meaning to all claim terms. 37 C.F.R. § 42.100(b) (2019).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“the structure and function of the 2006 904 Operating Manual’s product holder and Lindee’s grippers are similar in that they serve to grip food product and guide it to the slicing station. See, e.g., Ex. 1005, 23; Ex. 1006, 18:20–35, Fig. 7A. The two devices differ in their actuation—the 2006 904 Operating Manual uses a ball screw spindle actuator to drive the product holder along the feed path, whereas Lindee uses a timing belt 334 to drive its grippers 151 along the feed path. Ex. 1005, 273–274; Ex. 1006, 18:33–34, Fig. 7A. However, Petitioner presented evidence that “unlike ball screws, belt drives do not require periodic lubrication with grease or exhibit backlash when they change direction.” Ex. 1003 ¶ 160. In addition, Petitioner demonstrates that a POSA at the time would have understood that conveyor belts like Lindee’s can be easily cleaned. Ex. 1051 ¶¶ 50–54. Petitioner further asserted that conveyor belts are easy to maintain at low cost. Id. citing ¶¶ 55–58. We agree with Petitioner that, at least for some scenarios, including those that Petitioner specifies, a POSA would have seen that there were advantages to using Lindee’s timing belt rather than the 2006 904 Operating Manual’s ball-screw to drive food article grippers. Petitioner has demonstrated a POSA would have been motivated to combine Lindee’s belt-driven grippers in the 2006 904 Operating Manual’s food slicer notwithstanding Patent Owner’s arguments to the contrary.” slip op. at 50
Patent outcomesUS 10,639,812 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,639,812 - Ravin Crossbows, LLC v. MCP IP, LLCInstitutedPTAB · Sep 12, 2024 · IPR2024-00524 · APJ Mitchell G Weatherly · IPR · Institution
Instituted review of claims 1–5 and 8–19 on the sole obviousness ground over Darlington and Islas.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). On April 24, 2018, the Supreme Court held that, under 35 U.S.C. § 314, the Office may not institute review of fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). Petitioner presents one ground, namely that the challenged claims are unpatentable as obvious in view of Darlington and Islas. Pet. 5. Patent Owner contends that the Petition should be denied in its entirety. For the reasons expressed below, we determine that Petitioner has demonstrated a reasonable likelihood of establishing that at least one claim is unpatentable. In accordance with the SAS decision and 37 C.F.R. § 42.108(a), we institute an inter partes review of all challenged claims of the ’831 patent on the sole ground proffered by Petitioner. B. Related Proceedings” slip op. at 2
- BurdenDecided for petitioner
“After reviewing Petitioner’s evidence, which is not disputed by Patent Owner, we find that the combination of Darlington and Islas sufficiently teaches the subject matter of limitations 1(e) and 1(f).” slip op. at 37
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts a person having ordinary skill in the art on the priority date of the ’831 patent: would have had (i) a Bachelor of Science degree in mechanical engineering, materials science, or a similar technical field; (ii) a working knowledge of and/or experience with projectile weapon (e.g., archery bow) operation and performance; and (iii) two to four years of experience with designing and manufacturing of consumer products. Pet. 4 (citing Ex. 1003 at ¶¶ 25–28). Patent Owner does not challenge Petitioner’s definition. See generally Prelim. Resp. For the purposes of this Decision, we apply Petitioner’s uncontested definition because it appears consistent with the problems addressed in the ’831 patent and the prior art. C. Claim Interpretation” slip op. at 10
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner
“2. Analysis The Federal Circuit instructs that: “[t]o demonstrate an actual reduction to practice, the applicant must have: (1) constructed an embodiment or performed a process that met all the limitations of the claim and (2) determined that the invention would work for its intended purpose.” Steed, 802 F.3d at 1318. “That is, to reduce any particular claim to practice, the applicant must have constructed an operational embodiment within the scope of that claim.” Nintendo of America Inc. v. iLife Technologies, Inc., 717 Fed. Appx. 996 (Fed. Cir. 2017) (addressing Steed’s above, two-prong standard). The Board may find an actual reduction to practice based on, for example, “testimony of the inventors, corroborating witnesses, and corroborating documentary evidence” (id. at 1002) if “[t]his evidence, taken together, is sufficient for a reasonable mind to conclude that the prototype created by the inventors . . . was within the scope of claims . . . and would work for its intended purpose” (id. at 1003). But if “[t]he prototype has not been shown to meet all the limitations of the[] claims, . . . the record thus lacks evidence sufficient to support the . . . conclusion [of an actual reduction to practice].” Id. at 1004 (citing Steed, 802 F.3d at 1318). “[A]n inventor’s testimony alone is insufficient to establish an earlier reduction to practice. Medichem[, S.A. v. Rolabo, S.L.], 437 F.3d [1157,] 1169–71.” “In the final analysis, each corroboration case must be decided on its own facts with a view to deciding whether the evidence as a whole is persuasive.” Cooper v. Goldfarb, 154 F.3d 1321, 1331 (Fed. Cir. 1998) (quoting Berges v. Gottstein, 618 F.2d 771, 776 (C.C.P.A. 1980)).” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,909,831 - Ravin Crossbows, LLC v. MCP IP, LLCInstitutedPTAB · Sep 12, 2024 · IPR2024-00523 · APJ Arthur M Peslak · IPR · Institution
The Board instituted review of claims 1–6 and 9–20 on the § 103 ground over Darlington and Islas, finding a reasonable likelihood of unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Considering the Petition, the Preliminary Response, the Preliminary Reply, and the Preliminary Sur-reply as well as all supporting evidence, we conclude that the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail in its challenge of at least one claim of the ’017 patent as unpatentable. Pursuant to 35 U.S.C. § 314, we hereby institute an inter partes review of all challenged claims of the ’017 patent on the ground stated in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts a person having ordinary skill in the art on the priority date of the ’017 patent: would have had (i) a Bachelor of Science degree in mechanical engineering, materials science, or a similar technical field; (ii) a working knowledge of and/or experience with projectile weapon (e.g., archery bow) operation and performance; and (iii) two to four years of experience with designing and manufacturing of consumer products. Pet. 4 (citing Ex. 1003 at ¶¶ 25–28). Patent Owner does not challenge Petitioner’s definition. See generally Prelim. Resp. For the purposes of this Decision, we apply Petitioner’s uncontested definition because it appears consistent with the problems addressed in the ’017 Patent and the prior art.” slip op. at 12
- Expert testimonyPetitioner expert creditedDecided for patent owner
“Further, Patent Owner does not directly address Petitioner’s reasons why an ordinarily skilled artisan would have been motivated to combine the teachings of Darlington and Islas with a reasonable expectation of success. See generally Prelim. Resp. Rather, Patent Owner’s arguments against the proposed combination are based on the distinction between let out and take up ends of the cited references. See id. at 57–60. Patent Owner relies on the testimony of Dr. Reinholtz in support of this argument. However, Dr. Reinholtz merely restates Patent Owner’s arguments that an ordinarily skilled artisan would have recognized the distinction between the function of take up and let out ends of power cables and “would not have incorporated features from the ‘let out’ end of a power cable to the ‘take up’ end of a power cable because the ‘let out’ end and the ‘take up’ end perform different functions, namely, to ‘let out’ or ‘take up’ the power cable respectively.” Ex. 2007 ¶ 84. As we discussed above, at this stage of the proceeding, we preliminarily determine that this argument is not commensurate with the scope of claim 1. For these reasons, we find that Petitioner sufficiently shows that an ordinarily skilled artisan would have been motivated to combine Darlington and Islas with a reasonable expectation of success for the reasons stated by Mr. Lange. Ex. 1003 ¶¶ 55–61. His testimony is sufficiently supported by citations to Darlington and Islas as well as other references supporting his testimony of the knowledge of a person of ordinary skill in the art. Id. at ¶ 55 (citing Ex. 1007, 1008). Because his testimony is sufficiently based on evidence, Patent Owner’s contention that the proposed combination is based on improper hindsight is unavailing based on the present record. See In re Cree, 818 F.3d 694, 702, n.3 (Fed. Cir. 2016).” slip op. at 43
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“The crux of Patent Owner’s contentions that an ordinarily skilled artisan would not have been motivated to combine the teachings of Darlington and Islas is that the functions of the take up and let out ends of the cams disclosed in Darlington and/or Islas are different. To evaluate this argument, we first examine the language of claim 1. Claim 1 recites a first rotatable member and a second rotatable member. Ex. 1001, 6:55–57. Patent Owner’s “reverse wrap” concept, as claimed is recited with respect to only one of the rotatable members, i.e., the first rotatable member. Id. at 7:1–7. Claim 1 does not limit the first rotatable member to either a take up end or a let out end. See id. Patent Owner does not propose a construction of claim 1 that would limit the first rotatable member to a take up end. See generally Prelim. Resp. Consequently, at this stage of the proceeding, it appears arguments regarding allegedly different functions of the take up and let out ends of Darlington and/or Islas are not commensurate with the scope of claim 1. Further, Patent Owner does not directly address Petitioner’s reasons why an ordinarily skilled artisan would have been motivated to combine the teachings of Darlington and Islas with a reasonable expectation of success. See generally Prelim. Resp. Rather, Patent Owner’s arguments against the proposed combination are based on the distinction between let out and take up ends of the cited references. See id. at 57–60. Patent Owner relies on the testimony of Dr. Reinholtz in support of this argument. However, Dr. Reinholtz merely restates Patent Owner’s arguments that an ordinarily skilled artisan would have recognized the distinction between the function of take up and let out ends of power cables and “would not have incorporated features from the ‘let out’ end of a power cable to the ‘take up’ end of a power cable because the ‘let out’ end and the ‘take up’ end perform different functions, namely, to ‘let out’ or ‘take up’ the power cable respectively.” Ex. 2007 ¶ 84. As we discussed above, at this stage of the proceeding, we preliminarily determine that this argument is not commensurate with the scope of claim 1. For these reasons, we find that Petitioner sufficiently shows that an” slip op. at 42
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,354,017 - Ravin Crossbows, LLC v. MCP IP, LLCInstitutedPTAB · Sep 12, 2024 · IPR2024-00522 · APJ Arthur M Peslak · IPR · Institution
The Board instituted IPR on claims 1–4 and 7–19 based on Darlington and Islas, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314(a). See 37 C.F.R § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had (i) a Bachelor of Science degree in mechanical engineering, materials science, or a similar technical field; (ii) a working knowledge of and/or experience with projectile weapon (e.g., archery bow) operation and performance; and (iii) two to four years of experience with designing and manufacturing of consumer products. Pet. 3–4 (citing Ex. 1003 at ¶¶ 25–28). Patent Owner does not challenge Petitioner’s definition. See generally Prelim. Resp. For the purposes of this Decision, we apply Petitioner’s uncontested definition because it appears consistent with the problems addressed in the ’989 patent and the prior art.” slip op. at 12
- Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed
“contemporaneous knowledge of the activities of Mr. McPherson in or around 2008 or the bows that are pictured in Exhibits 2002 and 2003. See generally Ex. 2007. Rather, Dr. Reinholtz testifies “that the 2009 model year Mission Menace bow and the 2009 Mathews McPherson Series Monster bow embodied the claim limitations of the ’989 patent” based on his comparison of the disclosure in the Krenz articles “to the claims of the ’989 patent . . . from the perspective of a” person of ordinary skill in the art. Id. ¶ 32. Due his lack of personal contemporaneous knowledge, his testimony cannot corroborate Mr. McPherson’s testimony concerning reduction to practice and we give it no weight in that regard.13 We turn first to the Krenz articles. Mr. Ozanne14 holds the position of” slip op. at 21
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner
“reduction to practice, the applicant must have: (1) constructed an embodiment or performed a process that met all the limitations of the claim and (2) determined that the invention would work for its intended purpose.” Steed, 802 F.3d at 1318. “That is, to reduce any particular claim to practice, the applicant must have constructed an operational embodiment within the scope of that claim.” Nintendo of America Inc. v. iLife Technologies, Inc., 717 Fed. Appx. 996 (Fed. Cir. 2017) (addressing Steed’s above, two-prong standard). The Board may find an actual reduction to practice based on, for example, “testimony of the inventors, corroborating witnesses, and corroborating documentary evidence” (id. at 1002) if “[t]his evidence, taken together, is sufficient for a reasonable mind to conclude that the prototype created by the inventors . . . was within the scope of claims . . . and would work for its intended purpose” (id. at 1003). But if “[t]he prototype has not been shown to meet all the limitations of the[] claims, . . . the record thus lacks evidence sufficient to support the . . . conclusion [of an actual reduction to practice].” Id. at 1004 (citing Steed, 802 F.3d at 1318). “[A]n inventor’s testimony alone is insufficient to establish an earlier reduction to practice. Medichem[, S.A. v. Rolabo, S.L.], 437 F.3d [1157,] 1169–71.” “In the final analysis, each corroboration case must be decided on its own facts with a view to deciding whether the evidence as a whole is persuasive.” Cooper v. Goldfarb, 154 F.3d 1321, 1331 (Fed. Cir. 1998) (quoting Berges v. Gottstein, 618 F.2d 771, 776 (C.C.P.A. 1980)).” slip op. at 20
§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,683,989 - Lululemon Athletica Canada Inc. / Lululemon USA Inc. v. Nike, Inc.Some claims unpatentablePTAB · May 13, 2024 · IPR2023-00189 · APJ Stephen E Belisle · IPR · Final written decision
Claims 1–4, 7, 8, and 11–16 are unpatentable over Arrasvuori; claims 5, 6, 9, 10, and 17–20 are not unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’256 patent, the background technical field, the prior art, and Petitioner’s unopposed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Dr. Lynch (Ex. 1003 ¶¶ 43, 44).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“simultaneously communicate in real-time to the first user at the first location and the second user at the second location, an interface indicating whether the challenge has been met.” Ex. 1001, 40:64–67 (emphasis added). The claim language itself suggests that “continuously generat[ing]” an interface in “real-time” allows the interface to indicate whether a challenge “has been met,” and doing so “in real-time” suggests that updates to the interface are generated as developments occur that may affect whether the challenge “has been met.” Notably, the subject claim limitation explicitly recites “continuously” generating the interface “in real-time”; it does not recite— but easily could have if intended—“periodically” generating the interface (i.e., at predetermined time intervals independent of the occurrence of developments that may affect whether the challenge has been met).3” slip op. at 29
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artDecided for petitioner
“Petitioner contends Arrasvuori qualifies as prior art under 35 U.S.C. §§ 102(a) and 102(e) based on its filing and publication dates. Pet. 24. Patent Owner does not contest the prior art status of Arrasvuori. Also, on this record, we have no evidence of an invention date other than the earliest possible effective filing date of the challenged claims. Thus, for purposes of this Decision, we determine that Arrasvuori qualifies as prior art under 35 U.S.C. § 102(a) because Arrasvuori’s publication date of October 11, 2007, is before the earliest possible effective filing date of the challenged claims, which is March 3, 2008, and under § 102(e) because Arrasvuori’s filing date of March 29, 2006, is before the earliest possible effective filing date of the challenged claims (March 3, 2008). Ex. 1001, codes (22), (60), (63); Ex. 1005, code (22), (43).” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Arrasvuori discloses (a) “[m]onitoring” of “users performing real- world fitness tasks” (Ex. 1005 ¶ 38), using (b) “monitoring equipment . . . integrated into . . . wireless nodes and/or other computers of users, and/or [] attached to bodies of users” (id. at ¶ 39 (emphasis added)), where (c) “[u]sers might . . . wear their wireless nodes and/or other computers” (id. (emphasis added)), and where (d) “[t]he phrase[] ‘computer’ . . . refer[s] but [is] not limited to . . . a computerized watch” (id. at ¶ 90 (emphasis added); see id. at ¶ 40 (disclosing that “employed monitoring equipment might include one or more sensors”)). We find that these descriptions in Arrasvuori provide an anticipatory disclosure, particularly to the skilled artisan, of the limitation “wirelessly-connected sensor worn on an appendage of a first user.” See Ex. 1017 ¶ 45; Ex. 2006, 84:10-85:22. Although Arrasvuori does not recite in a single sentence the substance of disclosures (a) through (d) above, such as explicitly stating that its “wireless node is a computerized watch,” this is not necessary for the skilled artisan to understand that Arrasvuori discloses such a feature. See In re Bond, 910 F.2d at 832–33 (anticipation “is not an ‘ipsissimis verbis’ test”). Moreover, as argued by Petitioner, Arrasvuori’s disclosure of sensors “attached to bodies of users” and of users “wear[ing]” sensors itself discloses the subject limitation as broadly recited, even without considering the additional disclosure of a computerized watch. See Pet. Reply 17 (“Arrasvuori teaches wrist-worn sensors by stating that its users can ‘wear their wireless nodes and/or other computers.’” (citing Ex. 1005 ¶39)).” slip op. at 21
Patent outcomesUS 9,278,256 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,278,256
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.