• Advanced Micro Devices, Inc. v. LG Electronics Inc.Some claims unpatentable
  PTAB · Dec 27, 2016 · IPR2015-01409 · APJ Garth D Baer · IPR · Final written decision

  Claims 4, 8, and 9 are unpatentable under § 103; claim 30 was not shown unpatentable because the prior art did not teach shutdown based on total processor use below a threshold.

  RulingsFinal written decision

  • BurdenOther

    “III. ANALYSIS A. PRINCIPLES OF LAW Petitioner bears the burden of proving unpatentability of the challenged claims, and that burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, 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).” slip op. at 7

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Public accessibility” is the touchstone in determining whether a reference is a “printed publication.” In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). A reference is publicly accessible upon a satisfactory showing that such document has been made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it. Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008)). slip op. at 13

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

    “construction in light of the specification of the patent in which [they] appear[].” 37 C.F.R. § 42.100(b). We presume a claim term carries its “ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question” at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We construe only those claim terms necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for patent owner

    “We decline to disregard all of Mr. Gafford’s testimony. In light of Mr. Gafford’s education and experience (a Bachelor of Science Degree in Electrical Engineering and over 43 years working for corporations in the design, manufacturing, and support for computer systems and microprocessors, see Ex. 1011 ¶¶ 14–20), we see no reason why Mr. Gafford’s frequent participation in other cases—even to ultimately mixed results—makes his testimony here unhelpful in understanding the evidence in this case. See Fed. R. Evid. 702(a). In assessing the merits of this case, we have considered the proffered testimony from Mr. Gafford, as well as Patent Owner’s Declarant Dr. Friedman, and accorded weight based on the testimony’s substantive persuasiveness.” slip op. at 29

  Patent outcomesUS 7,636,863 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,636,863
• Elekta, Inc. v. Varian Medical Systems, Inc.All claims unpatentable
  PTAB · Dec 23, 2016 · IPR2015-01401 · APJ Garth D Baer · IPR · Final written decision

  Claims 1, 4–7, 14, 15, 53, 60, and 61 are unpatentable over Jaffray 2001 under §§ 102(b) and 103(a), and over the stated Jaffray combinations under § 103(a).

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner

    “ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question” at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We construe only those claim terms necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). 2. “capable of implementing a treatment plan” Patent Owner takes the position that to be “capable of implementing a treatment plan,” a radiation treatment system cannot still be in development and must pass industry-established quality assurance validations that are prerequisites to commissioning such systems for use on real patients. See PO Resp. 17–18. We decline to read in these additional limitations. Neither the claims nor the Specification has any support for excluding devices that are still early in development, or those that have not yet been validated against established quality standards. The broadest reasonable construction of the term requires no more than a system capable of implementing one or more treatment plans. 3. “communications network” slip op. at 7

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

    “Patent Owner asserts “[a] communications network is a communication system that facilitates communication between many devices and that uses a networking protocol to selectively route messages to their intended devices.” PO Resp. 28. In Reply, Petitioner proposes a broader construction: “a link between two or more components of the radiation treatment system that allows information to be shared between them.” Reply 11. We agree with Petitioner. In the three instances when the ’021 patent Specification recites “communications network,” it describes only a generic connection between components. See Ex. 1001, 2:36–40 (explaining that “[t]he couch 218 may be connected to the therapy simulator rotatable gantry via a communications network”), 4:16–18 (explaining that “the computer 220 connects to the simulator 100 and the command processor 225 via a communications network 240”), 6:16–18 (explaining that “box 451, processor 425, and computer 450 connect to simulator 400 via communications network 440”). Figures 1 and 3 of the ’021 patent depict the communications network (items 240 and 440) simply as arrows connecting various components. Notably absent from the ’021 patent is any reference to networking protocols or a routing mechanism, and nothing in the term’s plain language requires a networking protocol or selectively routing messages as Patent Owner suggests. We agree with Petitioner under the broadest reasonable construction, a communications network is simply a link between two or more components of the radiation treatment system that allows information to be shared between them. 4. “a high energy radiation source” and “a cone-beam radiation source”” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “i. Jaffray 2001 Teaches “a radiation treatment system capable of implementing a treatment plan” All of the challenged claims require a “radiation treatment system capable of implementing a treatment plan.” We agree with Petitioner that because Jaffray 2001 teaches “[t]he adaptation of this system to a medical linear accelerator for on-line image-guided radiation therapy demonstrates the suitability of this technology for intra-therapeutic guidance,” Jaffray 2001 discloses a system capable of implementing a treatment plan. See Pet. 18 (quoting Ex. 1003, 800); Ex. 2024 ¶¶ 25–28 (explaining that “a medical linear accelerator, by its very nature, is capable of implementing a treatment plan”), ¶¶ 29–30 (explaining that Fig. 2(a) from Patent Owner’s Exhibit 2015 confirms that Jaffray 2001’s medical linear accelerator is capable of implementing a treatment plan). In contesting this element, Patent Owner notes that one of the other Jaffray references—Jaffray JRO 1999 (Ex. 1007)—states its design “allows normal operation of the accelerator with the imagers removed and the kV xray tube retracted.” Ex. 1007, 775. Patent Owner interprets Jaffray JRO 1999’s statement to mean in all of Jaffray’s systems, removing the imaging system was “necessary” before the linear accelerator could implement a treatment plan. PO Resp. 8–9; Ex. 2020 ¶ 58. Patent Owner argues further Jaffray 2001’s system was not capable of implementing a treatment plan because it was still in development and had not been tested or validated against established industry standards that must be met before the FDA will commission such devices for medical use. See PO Resp.17–18; Ex. 2020 ¶¶ 49–52. We disagree. As explained above, under our claim construction, the claim limitation at issue requires only a system capable of implementing one or more treatment plans, not one that is ready to certify for actual medical use on real patients. Jaffray JRO 1999’s reference to allowing normal operation with the imagers removed does not undermine that teaching; it simply indicates the disclosed system permits radiation therapy with the imagers removed, a feature beneficial for “limited situations in which the treatment plan may require extreme angulation.” Reply 3; see Ex. 1024 ¶¶ 7–8. We find Jaffray 2001 discloses a radiation treatment system capable of implementing a treatment plan as the challenged claims require.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “challenged claims, the claimed subject matter would have been obvious over Jaffray 2001 at the time of the invention. See Pet. 26–27. As explained above, we find Jaffray 2001 discloses every limitation from the challenged claims. In addition, Petitioner explains—with unrefuted support from Dr. Hamilton and the prior art—by 1981 translatable treatment couches moveable in three planes plus angulation and coupled to the gantry via a communications network were standard on linear accelerators. See Pet. 26– 27 (citing Ex. 1016 ¶ 36; Ex. 1015, 220; Ex. 1010, 1, 2, 12, 39–48). Petitioner also explains—again with unrefuted support from Dr. Hamilton— none of the Jaffray references suggest any changes to these standard features and one skilled in the art would understand the linear accelerator depicted in Jaffray 2001 is the Elekta SL20, which had a translatable treatment couch including the same standard features. Pet. 27 (citing Ex. 1016 ¶ 128). In addition, Petitioner explains that to the extent Jaffray 2001 fails to disclose a computing unit to capture and store image projection data, it would have been obvious to one skilled in the art to include one because “to process the image projection data to generate volumetric images, it is necessary to store the image projection data in the computer which will process the data.” Pet. 27 (citing 1016 ¶ 207). Thus, in addition to demonstrating the necessary disclosures in the prior art (through incorporating its anticipation argument), Petitioner identified sufficient reasons that would have prompted a person of ordinary skill in the relevant field to combine the elements the way the claimed invention does. See KSR, 550 U.S. at 418. In contesting obviousness based on Jaffray 2001, Patent Owner reiterates its argument that Jaffray 2001 does not disclose a system capable of implementing a treatment plan (as required in all of the challenged claims), a computing unit coupled to the rotatable gantry via a communications network (as required in claims 1, 4, and 5), or a translatable treatment couch coupled to the rotatable gantry via a communications network (as required in claims 14, 15, and 60). PO Resp. 45. Patent Owner asserts also we should reject Petitioner’s obviousness challenge as an improper attempt to “bootstrap” obviousness to anticipation, without identifying any differences between the claimed subject matter and the prior art or explaining why those elements would have been obvious to a person of ordinary skill in the art. Id. at 43. We disagree with Patent Owner’s arguments addressing Jaffray 2001’s ability to implement a treatment plan and communications network for the reasons explained in our anticipation analysis above. Moreover, we do not view Petitioner’s obviousness challenge as a mere “bootstrap” to anticipation because Petitioner identified potential differences between Jaffray 2001 and claimed subject matter (i.e., the claimed translatable treatment couch and computing unit to store image projection data) as well as rationale explaining why one skilled in the art would have known to include those elements.” slip op. at 19

  Patent outcomesUS 7,945,021 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,945,021
• Ameriforge Group, Inc. v. Worldwide Oilfield Machine, Inc.All claims unpatentable
  PTAB · May 16, 2016 · IPR2015-00233 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 1, 2, 4–10, 12–14, 16, 18, and 19 are unpatentable: claims 9 and 12 as anticipated by Baker, and the challenged claims as obvious over Baker with Dare, Collie, or Schlegelmilch.

  RulingsFinal written decision

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

    “In support of its altered claim construction, Ameriforge makes reference to a Supplemental Declaration of Dr. Glen Stevick (Ex. 1022). In that Declaration, Dr. Stevick testifies that the ’650 patent draws distinction between a “BOP stack” and a single “BOP” (Ex. 1022 ¶ 19), and that the claims themselves refer to “at least one BOP” (claim 1) or “a B.O.P.” (claim 14) rather than a BOP “stack” (Ex. 1022 ¶¶ 20–21). WOM’s own declarant, Mr. Gregg Perkin, also testifies that a “BOP stack” is understood as being composed of multiple individual BOPs. Ex. 2004 ¶ 32. We are cognizant that the ’650 patent generally characterizes its invention as being directed to a gate valve “suitable for replacing an entire BOP stack in a lower riser package.” Ex. 1001, 1:11–16. Nevertheless, in light of the record before us, including the noted distinction drawn between a BOP stack and a single BOP, and the plain language of the claims in referring only to a “BOP” or “B.O.P.,” we determine that the broadest reasonable interpretation of the pertinent phrases in claims 1 and 14 is “a gate valve that is sized suitably to perform the functions of wellbore sealing, tube cutting, and fluid flow controlling that would be expected of a BOP.”” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “cutting edge”; and (2) the act of cutting the pipe such that an “inclined surface” of the gate valve “produces a force on said pipe to move said pipe away from said gate.” a. “cutting edge” As set forth above, we construe “cutting edge” as “a narrow surface that performs the cutting function.” In the Petition, Ameriforge urges that Baker accounts for that feature in Figures 9 and 10, stating that the cutting edge disclosed there is the “square edge at right of outlet bore 212 and adjoining surface of outlet bore 212.” Pet. 22. Ameriforge’s declarant, Dr. Stevick, also testifies that Baker’s Figure 9 shows the required cutting edge. Ex. 1011 ¶ 62. WOM generally advocates that Baker does not disclose the claimed cutting edge. At the outset, we discern that WOM contends that no content of Baker’s disclosure conveys any structure that performs a “cutting function.” See, e.g., PO Resp. 17. More particularly, WOM argues that “Baker uses a broad shearing surface that is designed to crush the wireline or cable in order to shear it at the point adjacent to its upper corner.” Id. In that respect, it appears that WOM is drawing a distinction between an act of “shearing” and an act of “cutting.” Indeed, that was a position advocated by WOM at oral argument. See, e.g., Tr. 32–33. Yet, WOM does not point to adequate record evidence tending to support the proposition that the shearing operations described in Baker would not have been understood as acts of cutting. Here, it is clear that in “shearing” a pipe, Baker contemplates the severing of one portion of the pipe from another, and recognizes that such shearing action is accomplished using “blades.” See, e.g., Ex. 1002, 1:49– 53. Indeed, other prior art of record, directed to gate valves performing a shearing operation, describe the component facilitating such “shear[ing] off” of tubing as a “cutting edge.” Ex. 1003, 1:35–38, 4:22–25. We, thus, are persuaded on this record that Baker’s disclosure of shearing such structures as “a wire line or other tubular member” (Ex. 1002, 6:37–38), would be recognized as “cutting” those structures. slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “Accordingly, on this record, including the Specification of the ’650 patent, we are persuaded that a skilled artisan would have appreciated that Dare’s gate valve is sufficiently robust to operate in place of, or as a replacement for, a BOP.10 We also agree with Ameriforge that it would have been obvious to combine Baker’s and Dare’s teachings so as to arrive at the gate valve configuration required by claims 1, 2, 4–10, 12–14, 16, 18, and 19. See Pet. 29–33; Pet. Reply 21. For instance, with recourse to content of the prior art, and Dr. Stevick’s testimony, Ameriforge contends that the combination of Baker and Dare predictably would have conveyed a gate valve configured to harness the particular beneficial characteristics 10 Although not required by the claims of the ’650 patent, we also are persuaded that, based on description in the ’650 patent (for instance, column 1, lines 33–40), one of ordinary skill in the art also would have understood that Dare’s gate valve may operate in lieu of a “BOP stack.” attributed to the respective valves of Baker and Dare. In particular, Ameriforge contends that one of ordinary skill would have appreciated that Baker’s gate valve demonstrates improved flow characteristics arising due to the particular configuration of its tapered bore. Pet. 29–30 (citing Ex. 1011 ¶¶ 79–82. Ameriforge also submits a skilled artisan would have recognized from Dare’s teachings the practical benefits of a gate valve sized and constructed to provide the shearing capacity and flow control of a BOP, without the need for an additional BOP component. Id. at 32 (citing Ex. 1011 ¶¶ 44, 70–72, 79). We are persuaded that Ameriforge relies on rational, credible reasons for combining the teachings of Baker and Dale. The combination of those teachings would have suggested to a person of ordinary skill in the art, who is also a person of ordinary creativity, see KSR, 550 U.S. at 421, a gate valve structured as required by the claims of the ’650 patent, and one that accomplishes the emergency shearing functions attributed to Dare’s invention. More particularly, given the content of the prior art, a skilled artisan would have recognized reasonably that a gate valve may be configured, and be operable, to cut tubing and seal a wellbore at a level understood as suitable for replacing a BOP. We have considered the record before us, including the record evidence, the Petition, WOM’s Patent Owner Response, and Ameriforge’s Reply. We are persuaded that Ameriforge has demonstrated that all the features of claims 1, 2, 4–10, 12–14, 16, 18, and 19 are disclosed by Baker and Dare, and that there is persuasive reasoning for combining the teachings of Baker and Dare. See Pet. 20–33.” slip op. at 29

  • Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia outweighedDecided for petitioner

    “WOM generally represents that it has sold some of its systems to Helix since 2002, and that such sales “and WOM’s services delivered in connection with” those systems have generated a certain revenue. PO Resp. 5. WOM, however, provides little, if any, context for the numbers that it advances. In that respect, the number of units sold to a single customer and the amount of revenue generated from those sales tells us little with respect to any commercial success of the particular product referenced by WOM. See In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (“This court has noted in the past that evidence related solely to the number of units sold provides a very weak showing of commercial success, if any.”). Indeed, notably absent from WOM’s evidence of commercial success is any indication of the market share that its asserted sales represent, or any breakdown between sales revenue and revenue associated with servicing the systems. Accordingly, WOM has provided a very weak showing of commercial success in support of nonobviousness based on secondary considerations. 7. Conclusion - Obviousness We recognize that evidence of secondary considerations, such as that presented by Patent Owner, must be considered in route to a determination of obviousness/nonobviousness under 35 U.S.C. § 103. Accordingly, we consider anew the issue of obviousness under 35 U.S.C. § 103, carefully evaluating and weighing both the evidence presented by Petitioner and the objective evidence of nonobviousness provided by Patent Owner. We have 12 A redacted version of Mr. Kinnear’s Declaration appears in the record as Exhibit 2003. An unredacted version appears as Paper 23. considered the entirety of the evidence in this proceeding, including Ameriforge’s strong evidence of obviousness and WOM’s very weak evidence of commercial success, and conclude that Petitioner has shown by a preponderance of the evidence that claims 1, 2, 4–10, 12–14, 16, 18, and 19 would have been obvious over Baker taken with any of Dare, Collie, or Schlegelmilch.” slip op. at 34

  Patent outcomesUS 6,601,650 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,601,650
• Sharp Corporation / Sharp Electronics Corporation v. Wi-Lan Inc.Institution denied
  PTAB · Apr 1, 2016 · IPR2016-00010 · APJ Garth D Baer · IPR · Institution

  The Board denied institution for claims 1–5 and 9 because the petition did not show that the references taught or suggested concurrent scaling and adjusting; claim 8 was disclaimed.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “and 9 would have been obvious over Katsumata and Hollander, and claim 3 would have been obvious over Katsumata, Hollander, and Jack. Pet. 16–36. Claims 1–5 and 9 require scaling a pair of fields and adjusting one of the pair, “where said adjusting is performed concurrently with said scaling.” Ex. 1001, 10:59–60 (emphasis added). As outlined above, under our construction of “concurrently,” there must be some overlap in performing the adjusting and scaling steps, either by interleaving or by simultaneous execution. We find Petitioner has not made an adequate showing that the asserted references teach or suggest performing the scaling and adjusting steps “concurrently.”” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “unreasonably broad. Petitioner’s construction does not account adequately for the second part of the cited definition, which addresses the need to share common resources. See Ex. 1009, 133. Petitioner’s construction would leave the disputed term meaningless, as almost any two events could be characterized as concurrent simply by identifying a sufficiently long common interval. See Merck & Co. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.”). For example, two minute-long processes taking place during the same week would be concurrent under Petitioner’s proffered construction, even if one ends days before the other begins.” slip op. at 6

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

    “scaling and the adjusting occur concurrently at read-out.” Pet. 26. According to Petitioner, combining Katsumata’s scaling with Hollander’s adjusting would result in concurrent processes because the scaling and adjusting processes both involve reading out stored input signals from memory. See id. at 26 (citing Ex. 1008, 35). Although Petitioner’s assertion might suffice under its proffered construction for concurrently, it does not under ours. Petitioner has not identified any teaching in Katsumata or Hollander relating the timing of the adjusting and scaling steps to one another. See Pet. 26–27. Even if, as Petitioner asserts, the references disclose both scaling and adjusting in part through reading signals from memory, those teachings are not precise enough to suggest that combining the references would result in the two processes overlapping. Petitioner has not offered any explanation why it would have been obvious to one skilled in the art to perform the scaling and adjusting processes sequentially instead of concurrently (though still at read out). See id. at 25–27. Because claims 1–5 and 9 require scaling and adjusting “performed concurrently,” we find, on the current record, Petitioner has not set forth a reasonable likelihood of succeeding on obviousness. Accordingly, we decline to institute an inter partes review.” slip op. at 10

  • Adverse judgmentAdverse judgmentOther

    “instituted unless “the information presented in the petition . . . 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.” Because “[n]o inter partes review will be instituted based on disclaimed claims,” 37 C.F.R. § 42.107(e), we do not institute inter partes review as to claim 8. In addition, having considered the Petition and the Preliminary Response, we determine that there is not a reasonable likelihood that Petitioner would prevail in establishing that claims 1–5 and 9 of the ’645 patent are unpatentable. Therefore, we decline to institute an inter partes review.” slip op. at 2

  Claim construction§ 103 obviousness
  Patents in suitUS 6,359,654

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.