- Google LLC / Ecobee, Inc. v. Ecofactor, Inc.All claims unpatentablePTAB · Aug 1, 2024 · IPR2020-01504 · APJ Scott B Howard · IPR · Remand
On remand, the Board held claims 1–20 unpatentable as obvious over Wedekind and Ehlers and denied Petitioner’s motion to exclude Dr. Palmer’s testimony.
RulingsRemand decision- RemandOther
“Circuit held that we erred in construing limitation 1m. According to the Federal Circuit, In sum, both the claim language and the specification support a broader construction than the Board accorded the [1m] limitation. The proper construction of the term must allow for any of the five claimed inputs to potentially be used to calculate another claimed input. We agree, then, with Google’s proposed construction, which simply “require[s] that each of the five inputs be used at some point during the determination of the first time prior to said target time.” Appellant Br. 52 (emphasis and quotation marks omitted). Id. at 1059 (alteration in original). The Federal Circuit further ordered that we “apply this construction on remand.” Id. Following the issuance of the mandate, we held a conference call with the parties. See Paper 51, 2 (Order on Conduct of Proceedings on Remand). As noted in the previous paragraph, the Federal Circuit instructed us to apply Petitioner’s construction for limitation 1m on remand. Google, 92 F.4th at 1059. Because the construction was implicitly argued in the Petition, the parties had notice and opportunity to be heard. Paper 51, 5. Therefore, in accordance with PTAB Standard Operating Procedure 3,4 we “determine[d] that additional briefing [was] not warranted in this proceeding.” Id. at 4.5 We have jurisdiction under 35 U.S.C. § 6. This Final Written Decision on Remand is issued pursuant to 35 U.S.C. § 318(a). For the reasons that follow, we determine that Petitioner has shown by a 4 Available at https://www.uspto.gov/sites/default/files/documents/ptab_ sop_3-2023-oct.pdf. 5 Neither party requested to submit additional evidence or have an oral hearing on remand. Ex. 3002 (Email from the parties to the Board). unpatentable.” slip op. at 4
- Skill levelSkill level petitioner adoptedDecided for petitioner
“On the one hand, Patent Owner’s formulation is attorney argument without any supporting evidence. See PO Resp. 5–6. Although not cited in the Response, when Dr. Palmer testifies to the level of skill in the art, he opinion: EcoFactor contends that a person of ordinary skill in the arts at the time of the invention would have had a (a) bachelor's degree in engineering, computer science, or a comparable field of study, and (b) at least 2 years of professional experience in electronic thermostats, HVAC controls, building energy management and controls or other similarly relevant industry experience. Additional relevant industry experience may compensate for lack of formal education or vice versa. Ex. 2002 ¶ 22 (emphasis added). It is well settled that mere attorney arguments and conclusory statements that are unsupported by factual evidence are generally entitled to no probative value. See Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989) (“Attorney’s argument is no substitute for evidence.”). On the other hand, Petitioner’s proposal is supported by Mr. Shah’s testimony. See Pet. 26 (citing Ex. 1002 ¶¶ 26–27). Because Mr. Shah’s testimony is based on his years of experience, we give it some weight. See Ex. 1002 ¶¶ 2–10. Accordingly, we are persuaded that Petitioner’s formulation, except for the qualifier “at least,” is correct.9” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“After briefing, we issued an order inviting supplemental briefing regarding the preambles of the challenged claims. Paper 28. In the Order, we proposed that the preamble of each of the challenged claims was not limiting. Id. at 2–3. In supplemental briefing, both Petitioner and Patent Owner agreed with that construction. PO Claim Constr. Br. 1; Pet. Claim Constr. Br. 5. We adopt the parties undisputed construction that the preamble of each of the claims is not limiting. In doing so, we conclude that the preamble is not limiting because it is “only a statement of purpose and intended result” and “[t]he expression does not result in a manipulative difference in the steps of the claim.” Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1375–76 (Fed. Cir. 2001).” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“s) Conclusion Regarding Claim 1 For the reasons set forth above, Petitioner has demonstrated by a preponderance of the evidence that the subject matter of claim 1 would have been obvious over Wedekind and Ehlers. 4. Analysis of Claims 2–4, 6–20 Petitioner argues that the combination of Wedekind and Ehlers teaches the limitations recited in claims 2–4 and 6–20 and that a person having ordinary skill in the art would have combined the teachings with a reasonable expectation of success. Pet. 61–62, 64–75. Petitioner’s arguments are supported by citations to the prior art and the testimony of Mr. Shah. See id. We have reviewed Petitioner’s arguments and evidence, agree with them, and, therefore, adopt Petitioner’s arguments and evidence as our own.” slip op. at 61
Patent outcomesUS 8,498,753 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,498,753 - Philip Morris Products, S.A. v. Rai Strategic Holdings, Inc.All claims unpatentablePTAB · Jul 31, 2024 · PGR2020-00071 · APJ Jeffrey W Abraham · PGR · Remand
On remand, the Board held claims 10 and 27 unpatentable as obvious over Robinson, Greim, and Adams because skilled artisans would have optimized heater length through routine experimentation.
RulingsRemand decision- RemandOther
“Standard Operating Procedure 3 communicating the parties’ positions on submitting additional briefing on remand. Ex. 3001.2 We responded on April 15, 2024, authorizing the parties to file additional briefs limited to the question of “whether the Federal Circuit’s determinations on written description are applicable to an obviousness analysis, and if so, how they should be applied.” Ex. 3001. Petitioner filed its Supplemental Brief on Remand on April 29, 2024 (Paper 41, “Pet. Supp. Br.”), and Patent Owner filed its Supplemental Reply Brief on Remand on May 13, 2024 (Paper 42, “PO Supp. Reply”). B. The Issue on Remand As part of our Final Written Decision, we determined that Petitioner established, by a preponderance of the evidence, that claims 10 and 27 lack adequate written description support. FWD 38–41. In view of this, we declined to address Petitioner’s arguments that claims 10 and 27 are unpatentable as obvious in view of Robinson,3 Greim,4 and Adams.5” slip op. at 4
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a Bachelor’s degree in mechanical engineering, electrical engineering, chemistry, or physics, or a related field, and three to four years of industry experience, or a Master’s degree in mechanical engineering, electrical engineering, chemistry, or physics, or a related field, and one to two years of industry experience. Such a [person of ordinary skill in the art] would have been familiar with electrically powered smoking articles and/or the components and underlying technology used therein. Pet. 14 (citing Ex. 1004 ¶¶ 26–30). Patent Owner states that “[f]or purposes of the trial in this proceeding, [Patent Owner] accepts Petitioner’s proposed education and experience level of the [person of ordinary skill in the art].” PO Resp. 13. In view of the foregoing, for purposes of this Decision, we adopt Petitioner’s definition of a person of ordinary skill in the art. The prior art of record reflects this level of ordinary skill. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[t]he challenged claims are unpatentable under any reasonable construction,” and, “for purposes of this proceeding . . . adopts the plain meaning of the claims and submits that no claim term requires construction.” Pet. 14. Patent Owner contends it was improper for Petitioner to adopt the plain meaning of the claims without explaining what it considers the plain meaning of each claim term to be. PO Resp. 13. Patent Owner does not offer a construction for any claim term. PO Resp. 13. After considering the full record developed during trial, we determine that no claim limitations need an express construction for purposes of resolving the controversy.” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Although Patent Owner is correct that Petitioner does not direct us to any disclosure of a heating member having a length that “falls within the claimed range,” such a disclosure in the art is not required for a showing of obviousness. See, e.g., In re Huang, 100 F.3d 135, 136 (Fed. Cir. 1996). In Huang, the claim required a racquet grip comprising a textile layer and a polyurethane layer, and that the ratio of their thicknesses be “larger than approximately 0.18.” Id. at 137. The prior art disclosed a textile layer and polyurethane layer in thickness ratios ranging from 0.111–0.142. Id. at 136. Although the prior art did not disclose a ratio in the claimed range, the Federal Circuit affirmed the Board’s obviousness rejection because the evidence showed that “one of ordinary skill in the art would have experimented with various thicknesses to obtain an optimum range.” Id. at 139; see In re Aller, 220 F.2d 454 (CCPA 1955) (affirming an obviousness rejection of a claim to a chemical process reciting use of 25– 70% sulfuric acid at 40–80 degrees when the prior art disclosed the same reaction with 10% sulfuric acid at 100 degrees); In re Hill, 284 F.2d 955 (CCPA 1960) (affirming an obviousness rejection of a claim to a chemical process conducted at 150–250 degrees when the prior art disclosed the same reaction at 300 degrees). The Federal Circuit also noted that “Huang does not contend that he has achieved unexpected results by increasing the thickness of the polyurethane layer.” Huang, 100 F.3d at 139–140. Those principles apply with equal force to the facts in this case. Here, the evidence of record demonstrates that heaters having a length that spans some percentage of the length of the disposable aerosol forming substance were known in the art. For example, Robinson discloses one embodiment wherein heating element 72 has an elongated portion that extends into tobacco segment 89. Ex. 1006, 27:35–39, Fig. 3. Greim likewise discloses a heating element having some length, which may be inserted into a plug of an aerosol-forming substrate. Ex. 1007, 13, Fig. 4. Adams discloses similar information. Ex. 1008 ¶ 45 (“The axial length of the projection 72 is selected so that it does not extend all the way through the tobacco plug.”), Fig. 7. Following the reasoning in Huang, these disclosures of a heater having some length, albeit not necessarily a length in the claimed range, are sufficient to demonstrate obviousness if there is evidence demonstrating “one of ordinary skill in the art would have experimented with various [lengths] to obtain an optimum range” and there is no evidence that the claimed range provides unexpected results. Huang, 100 F.3d at 139.” slip op. at 22
Patent outcomesUS 10,492,542 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,492,542 - Amp Plus, Inc., Dba Elco Lighting v. DMF, Inc.Some claims unpatentablePTAB · Mar 27, 2023 · IPR2019-01094 · APJ Debra L Dennett · IPR · Remand
On remand, the Board held claim 22 not unpatentable over Imtra 2011 and Imtra 2007, alone or with Gifford, because Petitioner did not prove the obviousness grounds by a preponderance of the evidence.
RulingsRemand decision- BurdenNot shown unpatentable
“Petitioner bears the burden of proving unpatentability of the challenged claims, a burden that never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Petitioner must establish the facts supporting its challenge by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). In view of Petitioner’s failure to direct us to evidence sufficient to establish a person of ordinary skill in the art could have and would have installed the marine recessed lighting system disclosed in Imtra 2011 in a building, we find Petitioner fails to show obviousness of claim 22 over the combination of Imtra 2011 and Imtra 2007 by a preponderance of the evidence.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“D. Ground 3: Obviousness over Imtra 2011, Imtra 2007, and Gifford Petitioner fails to show that the Imtra references render claim 22 obvious. In the Final Decision we noted that Petitioner challenged several claims, including claim 22, as obvious over the combination of Imtra 2011, Imtra 2007, and Gifford, and determined that Petitioner failed to prove by a preponderance of the evidence that one of ordinary skill in the art would have been motivated to modify the Imtra references in view of Gifford’s teaching. Id. at 48–49. The Federal Circuit affirmed our determination, which we maintain here. For these reasons, Petitioner fails to show obviousness of claim 22 over the combination of Imtra 2011, Imtra 2007, and Gifford by a preponderance of the evidence.” slip op. at 9
Patent outcomesUS 9,964,266 mixed§ 103 obviousnessPatents in suitUS 9,964,266
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