- Infobionic, Inc. v. Braemar Manufacturing, LLCAll claims unpatentablePTAB · Dec 29, 2016 · IPR2015-01679 · APJ Scott C Moore · IPR · Final written decision
Claims 1, 2, 4, 6, 7, 10, 11, 13–15, and 17 are anticipated by Sellers; claims 3, 5, 8, 9, 12, 16, and 20–22 are obvious over Sellers and Stutman; claims 18–19 are obvious over …
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for petitioner
“location.” See PO Resp. 21–22; Reply 2. On this record, we determine that the claim term “central monitoring device” is not further limited to a device that performs monitoring “during a monitoring session” such that it is able to “respond to patient status . . . when it detects evidence of certain physiologic conditions as they occur.” See PO Resp. 21–22. The Specification uses the term “central monitoring device” in an open-ended manner, and Patent Owner does not identify any lexicographic definition or disclaimer that would limit the claim term “central monitoring device” in the manner it proposes. See PO Resp. 20–22; Tr. 38:1–17. Though Patent Owner cites one dictionary that defines “monitoring” as “constantly checking on a patient’s condition” (Ex. 2021, 930), this definition is overly narrow because the Specification makes clear that monitoring may be performed on a periodic basis. See, e.g., Ex. 1001, 3:2–31, 8:57–64. Moreover, Patent Owner’s other dictionary definition (Ex. 2020, 752) does not reference a patient, or require detecting “physiologic conditions as they occur.” Dr. Fernald’s testimony regarding this claim term (Ex. 2003 ¶¶ 39– 41) is not persuasive because the portions of the Specification he cites do not limit the claim term “central monitoring device” in the manner Patent Owner proposes (see Ex. 2003 ¶ 39 (citing Ex. 1001, 3:10–16, 6:37–42, 7:13–20, 7:52–59, 8:23–38); Tr. 38:1–17), and because Dr. Fernald does not adequately account for the dictionary evidence indicating that the claim term “monitoring” does not require constantly observing a patient’s status (see Ex. 2020, 752). We find persuasive Dr. Stone’s testimony that one of ordinary skill would have understood the portions of the Specification cited by Patent Owner and Dr. Fernald to be non-limiting examples. Ex. 1011 ¶¶ 19–32. For the foregoing reasons, on this record, and under the applicable broadest reasonable interpretation standard, we construe “central monitoring device” as “a device that watches, keeps track of, or checks from a central location.” 2.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“On this record, and under the applicable broadest reasonable interpretation standard, we determine that the claim term “in communication with” encompasses indirect communications (e.g., communication by way of an intermediate component). We further determine that a processor need not generate a message, or respond to a message, in order to be “in communication with” a separate component. The ’901 Patent Specification uses the term “in communication with” in a broad, open-ended manner. See, e.g., Ex. 1001, 2:13–23, 2:38–44. In addition, Patent Owner does not cite any persuasive intrinsic or extrinsic evidence that a person of ordinary skill in the art would have read the claim term “in communication with” to exclude embodiments in which a processor merely receives information. See PO Resp. 40–43. Nor does Patent Owner cite any persuasive intrinsic or extrinsic evidence that the claim term “in communication with” excludes communication between a processor and a component when the processor is acting as an intermediary between that component and some other component. See id. In addition, Dr. Fernald fails to sufficiently support his conclusion that the claim term “in communication with” excludes such forms of communication. See Ex. 2003 ¶¶ 99–103. 4.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“On this record, we adopt Petitioner’s formulation concerning the level of ordinary skill in the art because this formulation more accurately describes the subject matter to which the ’901 Patent pertains. Patent Owner’s formulation is unduly narrow because subject matter of the ’901 Patent is not limited to “ECG telemetry devices” or other “remote monitoring and telemetry devices.” The parties do not dispute that Dr. Stone and Dr. Fernald are both qualified to testify about the perspective of one having ordinary skill in the art, regardless of which formulation we adopt. Tr. 24:22–25:3, 62:6–11. The parties also agree that the issues in this case do not turn on the differences between Petitioner’s and Patent Owner’s proposed formulations regarding the level of ordinary skill in the art. Id. at 24:13–19, 62:12–21. On this record, we find that both Dr. Stone and Dr. Fernald are qualified to offer expert opinions in this case. The factual findings and legal conclusions set forth below would not have differed had we adopted Patent Owner’s formulation regarding the level of ordinary skill in the art. 3.” slip op. at 14
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Dr. Fernald’s testimony regarding this claim term (Ex. 2003 ¶¶ 39– 41) is not persuasive because the portions of the Specification he cites do not limit the claim term “central monitoring device” in the manner Patent Owner proposes (see Ex. 2003 ¶ 39 (citing Ex. 1001, 3:10–16, 6:37–42, 7:13–20, 7:52–59, 8:23–38); Tr. 38:1–17), and because Dr. Fernald does not adequately account for the dictionary evidence indicating that the claim term “monitoring” does not require constantly observing a patient’s status (see Ex. 2020, 752). We find persuasive Dr. Stone’s testimony that one of ordinary skill would have understood the portions of the Specification cited by Patent Owner and Dr. Fernald to be non-limiting examples. Ex. 1011 ¶¶ 19–32.” slip op. at 9
Patent outcomesUS 6,225,901 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,225,901 - Infobionic, Inc. v. Braemar Manufacturing, LLCSome claims unpatentablePTAB · Dec 29, 2016 · IPR2015-01688 · APJ Scott C Moore · IPR · Final written decision
Claims 1, 2, 4, 6, 7, 11–16, and 19–23 are anticipated by Sellers; claims 3, 5, 8, 9, 17, and 18 are obvious over Sellers and Stutman; claim 10 was not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“On this record, we adopt Petitioner’s formulation concerning the level of ordinary skill in the art because this formulation more accurately describes the subject matter to which the ’403 Patent pertains. Patent Owner’s formulation is unduly narrow because subject matter of the ’403 Patent is not limited to “ECG telemetry devices” or other “remote monitoring and telemetry devices.” The parties do not dispute that Dr. Stone and Dr. Fernald are both qualified to testify about the perspective of one having ordinary skill in the art, regardless of which formulation we adopt. Tr. 24:22–25:3, 62:6–11. The parties also agree that the issues in this case do not turn on the differences between Petitioner’s and Patent Owner’s proposed formulations regarding the level of ordinary skill in the art. Id. at 24:13–19, 62:12–21. On this record, we find that both Dr. Stone and Dr. Fernald are qualified to offer expert opinions in this case. The factual findings and legal conclusions set forth below would not have differed had we adopted Patent Owner’s formulation regarding the level of ordinary skill in the art.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for petitioner
“The parties agree that a central monitoring device/service is a device/service that “watch[es], keep[s] track of, or check[s]” on something “from a central location.” See PO Resp. 21; Reply 2. On this record, we determine that the claim term central monitoring device/service is not further limited to a device/service that performs monitoring “during a monitoring session” such that it is able to “respond to patient status . . . when it detects evidence of certain physiologic conditions as they occur.” See PO Resp. 20– 22. The Specification uses the term “central monitoring device” in an openended manner, and Patent Owner does not identify any lexicographic definition or disclaimer that would limit this claim term in the manner it proposes. See PO Resp. 19–22; Tr. 38:1–17. The term “central monitoring service” does not appear in the Specification. Though Patent Owner cites a dictionary that defines “monitoring” as “constant checking on a patient’s condition” (Ex. 2021, 930), this definition is overly narrow because the Specification makes clear monitoring may be performed on a periodic basis. See, e.g., Ex. 1001, 3:6–35, 8:63–9:2. Moreover, Patent Owner’s other dictionary definition (Ex. 2020, 752) does not reference a patient, or require detecting “physiologic conditions as they occur.” Dr. Fernald’s testimony regarding this claim term (Ex. 2003 ¶¶ 39– 41) is not persuasive because the portions of the Specification he cites do not limit the term central monitoring device/service in the manner Patent Owner proposes (see Ex. 2003 ¶ 39 (citing Ex. 1001, 3:14–20, 6:42–47, 7:17–25, 7:57–64, 8:28–42); Tr. 38:1–17), and because Dr. Fernald does not adequately account for the dictionary evidence indicating that the claim term “monitoring” does not require constantly observing a patient’s status (see Ex. 2020, 752). We find persuasive Dr. Stone’s testimony that one of ordinary skill would have understood the portions of the Specification cited by Patent Owner and Dr. Fernald to be non-limiting examples. Ex. 1011 ¶¶ 21–34. For the foregoing reasons, on this record, and under the applicable broadest reasonable interpretation standard, we construe central monitoring device/service as a device or service “that watches, keeps track of, or checks from a central location.” 2.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“On this record, and under the applicable broadest reasonable interpretation standard, we determine that the claim term “in communication with” encompasses indirect communications (e.g., communication by way of an intermediate component). We further determine that a processor need not generate a message, or respond to a message, in order to be “in communication with” a separate component. The ’403 Patent Specification uses the term “in communication with” in a broad, open-ended manner. See, e.g., Ex. 1001, 2:17–27, 2:42–48. In addition, Patent Owner does not cite any persuasive intrinsic or extrinsic evidence that a person of ordinary skill in the art would have read the claim term “in communication with” to exclude embodiments in which a processor merely receives information. See PO Resp. 40–44. Nor does Patent Owner cite any persuasive intrinsic or extrinsic evidence that the claim term “in communication with” excludes communication between a processor and a component when the processor is acting as an intermediary between that component and some other component. See id. In addition, Dr. Fernald fails to sufficiently support his conclusion that the claim term “in communication with” excludes such forms of communication. See Ex. 2003 ¶¶ 99–103. 4.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Based on the arguments and evidence presented in the Petition and having considered the arguments and evidence presented by both parties during the trial, we are persuaded that Petitioner has established by a preponderance of the evidence that claims 1, 2, 4, 6, 7, 11–16, and 19–23 are anticipated by Sellers. 4.” slip op. at 26
Patent outcomesUS 6,940,403 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 6,940,403 - Infobionic, Inc. v. Braemar Manufacturing, LLCInstitution deniedPTAB · Dec 23, 2016 · IPR2016-01237 · APJ Ken B Barrett · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–44 would have been obvious over Baker, Xu, and Hatke.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review of U.S. Patent No. 7,212,850 B2 (“the ’850 patent”). Paper 2 (“Pet.”). The Petition challenges the patentability of claims 1–44 of the ’850 patent on the grounds of obviousness under 35 U.S.C. § 103. Braemar Manufacturing, LLC (Patent Owner) filed a Preliminary Response to the Petition. Paper 7 (“Prelim. Resp.”). Under 35 U.S.C. § 314(a), an inter partes review may not be 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.” After considering the information presented in the Petition, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any of the claims challenged in the Petition. Accordingly, we do not authorize an inter partes review to be instituted as to any challenged claim of the ’850 patent.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Further, a patent claim composed of several elements is not proved obvious merely by demonstrating that each of its elements was known, independently, in the prior art. Id. at 418. Additionally, we determine Petitioner—by, inter alia, ambiguously referring to disclosures in multiple references individually and in combination—has failed to explain adequately how it is proposing to combine or modify the references’ teachings to arrive at the claimed subject matter of the forty-four challenged claims. See, e.g., Pet. 29 (“Baker or Xu alone, as well as in combination, disclose the broader claim feature and the narrower feature in claims 35 and 41.”) For these reasons, we determine Petitioner has not demonstrated there is a reasonable likelihood of establishing the unpatentability of the challenged claims.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“display of Hatke’s Figure 6 is “strikingly similar” to that of Figures 2 and 4 of the ’850 patent, with Hatke’s “detected events on top of the trend data instead of below it.” Pet. 43–44. We determine that Petitioner’s argument is insufficient because it primarily relies on the purported similarity in appearance of the figures and fails to articulate sufficiently how the prior art suggests the claim limitation. We also agree with Patent Owner that this use of the ’850 patent hints at hindsight. See Prelim. Resp. 31 (“Aside from a desire to recreate Figure 2 of the ’850 patent, Petitioner fails to explain why the skilled person would have wanted to do this.”). Additionally, we disagree with Petitioner’s assertion that Hatke’s figure is “strikingly similar” to that of the ’850 patent. At most, Hatke’s oxyhemoglobin saturation data has an I-beam shape like that of the ’850 patent’s heart rate. However, Hatke’s histogram showing the quantity of apnea events does not have the appearance of AF burden. Rather, Petitioner is forced to look to a separate figure in Hatke, Figure 7, to find what Petitioner calls “blocks” similar to those of the ’850 patent. Id. at 45–46. Petitioner then proposes modifying Hatke’s Figure 6 by “dumbing [it] down,” apparently proposing to convert the quantities of apnea events to blocks depicting apnea event duration, reasoning that drawing a line for time span was a well-known and intuitive technique to depict time span. Id. at 46; see also id. at 49 (Petitioner impliedly arguing that displaying AF burden merely is drawing AF event time spans as a line). We do not find this persuasive because the fact that one could depict duration as a line does not explain adequately why one would modify Figure 6, even in the context of apnea events. Further, even were we to accept that it first would have been obvious to modify a display related to sleep apnea to arrive at Petitioner’s proposed modified Figure 6, Petitioner fails to explain persuasively why one would have utilized that proposed modified display—which would show oxyhemoglobin saturation and respiratory effort—as the format to display heart rate and AF burden. Mere similarity of appearance—particularly assuming, as we must, that one of ordinary skill lacks the knowledge of the figures of the ’850 patent—does not point towards an eventual conclusion of obviousness of the claimed subject matter.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightTeaching away not foundNot shown unpatentable
“display of Hatke’s Figure 6 is “strikingly similar” to that of Figures 2 and 4 of the ’850 patent, with Hatke’s “detected events on top of the trend data instead of below it.” Pet. 43–44. We determine that Petitioner’s argument is insufficient because it primarily relies on the purported similarity in appearance of the figures and fails to articulate sufficiently how the prior art suggests the claim limitation. We also agree with Patent Owner that this use of the ’850 patent hints at hindsight. See Prelim. Resp. 31 (“Aside from a desire to recreate Figure 2 of the ’850 patent, Petitioner fails to explain why the skilled person would have wanted to do this.”). Additionally, we disagree with Petitioner’s assertion that Hatke’s figure is “strikingly similar” to that of the ’850 patent. At most, Hatke’s oxyhemoglobin saturation data has an I-beam shape like that of the ’850 patent’s heart rate. However, Hatke’s histogram showing the quantity of apnea events does not have the appearance of AF burden. Rather, Petitioner is forced to look to a separate figure in Hatke, Figure 7, to find what Petitioner calls “blocks” similar to those of the ’850 patent. Id. at 45–46. Petitioner then proposes modifying Hatke’s Figure 6 by “dumbing [it] down,” apparently proposing to convert the quantities of apnea events to blocks depicting apnea event duration, reasoning that drawing a line for time span was a well-known and intuitive technique to depict time span. Id. at 46; see also id. at 49 (Petitioner impliedly arguing that displaying AF burden merely is drawing AF event time spans as a line). We do not find this persuasive because the fact that one could depict duration as a line does not explain adequately why one would modify Figure 6, even in the context of apnea events. Further, even were we to accept that it first would have been obvious to modify a display related to sleep apnea to arrive at Petitioner’s proposed modified Figure 6, Petitioner fails to explain persuasively why one would have utilized that proposed modified display—which would show oxyhemoglobin saturation and respiratory effort—as the format to display heart rate and AF burden. Mere similarity of appearance—particularly assuming, as we must, that one of ordinary skill lacks the knowledge of the figures of the ’850 patent—does not point towards an eventual conclusion of obviousness of the claimed subject matter.” slip op. at 13
§ 103 obviousnesscites KSRPatents in suitUS 7,212,850 - Infobionic, Inc. v. Braemar Manufacturing, LLCInstitution deniedPTAB · Dec 23, 2016 · IPR2016-01236 · APJ Ken B Barrett · IPR · Institution
The Board denied institution on all challenged claims 1–28 because Petitioner did not show a reasonable likelihood that the claims were obvious over Baker, Xu, and Hatke.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“limitation would have been obvious in view of the combination of Baker, Xu, and Hatke.”); id. at 26 (“Baker or Xu alone, as well as in combination, disclose the first claim limitation of independent claim 1 and 12.”). A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Further, a patent claim composed of several elements is not proved obvious merely by demonstrating that each of its elements was known, independently, in the prior art. Id. at 418. Petitioner’s discussion of the “subset” feature is an example of a flawed analysis focused on individual elements rather than an ordered whole. Petitioner’s rationale for the combining of Baker and Xu is that Xu “provid[es] an efficient and accurate AF detection algorithm” (Pet. 24) and “because [Xu’s algorithm] has the desirable characteristics of rapidly and accurately detecting AF events with robust anti-noise performance and requires a short amount of computing time” (id. at 31). Although it is not clear as to how Petitioner proposes to modify Baker by Xu, it appears that Petitioner may be proposing to substitute that efficient, rapid, and accurate algorithm into Baker’s system. Xu’s algorithm is efficient and accurate when it is “ready to use.” See Pet. 21. According to Petitioner (see id.), human assessment ceases before the algorithm becomes “ready to use” because human assessment is used only to “train up” the algorithm. Accordingly, the use of Xu’s system, after having been trained up and ready to use, would not involve human assessment of any subset of events identified by the system. Thus, Petitioner’s identification of a “subset” as being that data apparently the subject of one hundred percent human review prior to being “ready to use” (Pet. 40) is inconsistent with Petitioner’s reason why one would have combined Baker and Xu. Further, Petitioner’s style of addressing claim terms in a vacuum leaves us unable to determine whether Petitioner has demonstrated a likelihood of proving the claimed subject matter as a whole would have been obvious. It is not enough for Petitioner to assert that one or more references disclose a human assessment of a subset of data. See Prelim. Resp. 40. In claim 1, for example, the “subset” is of the “identified AF events,” which ties the subset to the limitation directed to identifying AF events and to the “pictographically presenting” limitation, which is based on the human assessment of the subset of the identified AF events. Petitioner does not adequately explain why or how the three relied-upon references would have been combined or modified such that all of the limitations of the claimed subject matter would have been satisfied at the same time in the same related manner as in the claims. Accordingly, Petitioner does not persuasively articulate an adequate reason why and how the teachings of the three reliedupon references would have rendered obvious the claimed subject matter as a whole.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“display of Hatke’s Figure 6 is “strikingly similar” to that of Figures 2 and 4 of the ’996 patent, with Hatke’s “detected events on top of the trend data instead of below it.” Pet. 41–42. We determine that Petitioner’s argument is insufficient because it primarily relies on the purported similarity in appearance of the figures and fails to articulate sufficiently how the prior art suggests the claim limitation. We also agree with Patent Owner that this use of the ’996 patent hints at hindsight. See Prelim. Resp. 29 (“Aside from a desire to recreate Figure 2 of the ’996 patent, Petitioner fails to explain why the skilled person would have wanted to do this.”). Additionally, we disagree with Petitioner’s assertion that Hatke’s figure is “strikingly similar” to that of the ’996 patent. At most, Hatke’s oxyhemoglobin saturation data has an I-beam shape like that of the ’996 patent’s heart rate. However, Hatke’s histogram showing the quantity of apnea events does not have the appearance of AF burden. Rather, Petitioner is forced to look to a separate figure in Hatke, Figure 7, to find what Petitioner calls “blocks” similar to those of the ’996 patent. Id. at 43–44. Petitioner then proposes modifying Hatke’s Figure 6 by “dumbing [it] down,” apparently proposing to convert the quantities of apnea events to blocks depicting apnea event duration, reasoning that drawing a line for time span was a well-known and intuitive technique to depict time span. Id. at 44; see also id. at 46 (Petitioner impliedly arguing that displaying AF burden merely is drawing AF event time spans as a line). We do not find this persuasive because the fact that one could depict duration as a line does not explain adequately why one would modify Figure 6, even in the context of apnea events. Further, even were we to accept that it first would have been obvious to modify a display related to sleep apnea to arrive at Petitioner’s proposed modified Figure 6, Petitioner fails to explain persuasively why one would have utilized that proposed modified display—which would show oxyhemoglobin saturation and respiratory effort—as the format to display heart rate and AF burden. Mere similarity of appearance—particularly assuming, as we must, that one of ordinary skill lacks the knowledge of the figures of the ’996 patent—does not point towards an eventual conclusion of obviousness of the claimed subject matter.” slip op. at 9
§ 103 obviousnesscites KSRPatents in suitUS 7,907,996 - Robert Bosch LLC / Daimler AG v. Orbital Australia Pty LtdAll claims unpatentablePTAB · Dec 22, 2016 · IPR2015-01258 · APJ Ken B Barrett · IPR · Final written decision
Claims 1, 2, 5, 9, 10, and 12–14, and 18 are unpatentable as anticipated by Bernhardt or obvious over the stated combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“have at least an undergraduate degree in mechanical engineering or a similar technical field and at least two (2) years of relevant work experience or equivalent advanced education in a field related to engine control technology.” Pet. 3 n.1. Patent Owner adopts, for purposes of this proceeding, Petitioner’s proposed definition of the ordinary artisan. PO 2 In its Preliminary Response, Patent Owner argued that Petitioner failed to meet its burden of establishing Bernhardt as a prior art printed publication. Prelim. Resp. 29, 32. Patent Owner subsequently withdrew its argument and “agree[d] that it will not submit in the IPR2015-01258 proceeding any arguments challenging the admissibility of the Bernhardt Exhibit in a motion to exclude, at the Oral Hearing, or at any other time in the IPR2015-01258 proceeding, including in any appeal of a final written decision.” Paper 22. Resp. 12 n.2. Based on our review of the record, we too adopt Petitioner’s assessment of the level of ordinary skill in the art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“We do not find Patent Owner’s arguments persuasive. As Petitioner notes (Reply 16), in claim 1, the fuelling rate of at least one cylinder during the period “while said ignition is so retarded” is compared to the fuelling rate during the period “when the engine is operating normally,” a phrase appearing later in the same limitation. This suggests that the retarded ignition state, like the operating normally state, is a condition of the engine’s pertinent cylinder, not a period within a single cycle, e.g., ATDC. See Ex. 1001, col. 3, ll. 22–33 (distinguishing “cylinder(s) operating under ignition retard/high fuelling rate conditions” with other cylinder(s) operating under “normal conditions”). In other words, a particular cylinder during a given cycle is operating either normally or is “so retarded,” according to the claimed method. Patent Owner offers no persuasive argument or evidence that one of ordinary skill in the art would understand the state of being ignition-retarded applies to only the portion of a cycle occurring ATDC, or would understand the claim to require a cylinder, during the same cycle, to be in both a normal operating state (in the BTDC range) and in an ignition-retarded state (in the ATDC range). Cf. Tr. 32:1–23 (counsel for Patent Owner confirming that, before the start of a cycle, the status of being ignition-retarded or operating normally is known). Patent Owner argues that the Board’s preliminary construction renders redundant and superfluous the phrase “while said ignition is so retarded.” PO Resp. 27–29. Patent Owner reasons that the phrase “when the engine is operating normally” already contrasts the fueling rate of the “‘retarded ignition’ state” with the normally operating (“non-retarded ignition”) state thereby rendering redundant and superfluous the phrase “while said ignition is so retarded” if we do not adopt Patent Owner’s proposed construction. Id. We do not find this argument persuasive. That phrase does not, as Patent Owner argues, limit the timing of the “increasing the fuelling rate” step to a period that is a subset of a given cycle, e.g., ATDC. Rather, the “while said ignition is so retarded” phrase requires the “increasing the fuelling rate” step to be performed at the same time as, i.e., “while,” the ignition is retarded pursuant to the “retarding the ignition” step, i.e., in an ignition-retarding condition or state. This is confirmed by the specification, which discusses performing the first two steps of the claim at the same time, explaining that, upon attainment of the desired exhaust temperature, “the engine management system may then cease to effect the ignition retard and high fuelling rate conditions and return the cylinder to normal ignition timing and fuelling rates.” Ex. 1001, col. 5, ll. 24–29. Were the “while said ignition is so retarded” absent from the claim, consistent with Patent Owner’s argument, the method would be practiced in a situation where the ignition was retarded then returned to normal, and thereafter the fueling rate increased relative to that of the normal operating conditions. By contrast, requiring the increasing of the fuelling rate to occur “while said ignition is so retarded” serves the claimed method’s purpose of increasing downstream gas temperatures. See Ex. 1008, 84 (Applicant, during prosecution, attempting to distinguish Morikawa by arguing that the reference “contains no disclosure of increasing the fuelling rate while the ignition is retarded for the purpose of assisting in increasing the exhaust gas temperature, as in the present invention”); id. at 85 (similarly attempting to distinguish two other references because they allegedly “lack disclosure which would have made it obvious to increase the fuelling rate while the ignition is retarded for the purpose of assisting in increasing the exhaust gas temperature”). The phrase “while said ignition is so retarded” is not redundant or superfluous under our preliminary construction.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Patent Owner contends, however, that Bernhardt does not anticipate if we adopt its proposed construction of “while said ignition is so retarded, increasing the fuelling rate” as requiring some fuel to be injected ATDC. PO Resp. 51. Specifically, Patent Owner argues that Bernhardt “necessarily injects all fuel BTDC” and therefore Bernhardt fails to disclose the “increasing the fuelling rate” limitation under Patent Owner’s narrow construction. Patent Owner’s argument is not persuasive because, for the reasons set forth above, the properly construed claims are not as narrow as Patent Owner proposes. See Section II.B. Based on the argument and evidence presented in the Petition and having considered the argument and evidence presented by both parties during the trial, we are persuaded that Petitioner has established, by a preponderance of the evidence, that claims 1, 2, 5, 10, 12, 13, and 18 are anticipated by Bernhardt.” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Patent Owner relies on its arguments concerning the Bernhardt anticipation ground and does not challenge otherwise Petitioner’s contentions regarding these two obviousness grounds. PO Resp. 51; see Tr. 28:24–29:16. We are persuaded by Petitioner’s contentions with respect to these two obviousness grounds based on Bernhardt (Pet. 24–31), and we adopt them as our own. We determine that Petitioner has demonstrated by a preponderance of the evidence that the combination of Bernhardt and Onishi renders obvious claim 9 and that the combination of Bernhardt and Griese renders obvious claim 14.” slip op. at 25
Patent outcomesUS 5,655,365 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 5,655,365 - Robert Bosch LLC / Daimler AG v. Orbital Australia Pty LtdAll claims unpatentablePTAB · Dec 22, 2016 · IPR2015-01259 · APJ Ken B Barrett · IPR · Final written decision
Claims 1, 2, 5, 9, 10, 12–14, and 18 are unpatentable as obvious over the instituted combinations of prior art.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We do not find Patent Owner’s arguments persuasive. As Petitioner notes (Reply 16), in claim 1, the fuelling rate of at least one cylinder during the period “while said ignition is so retarded” is compared to the fuelling rate during the period “when the engine is operating normally,” a phrase appearing later in the same limitation. This suggests that the retarded ignition state, like the operating normally state, is a condition of the engine’s pertinent cylinder, not a period within a single cycle, e.g., ATDC. See Ex. 1001, col. 3, ll. 22–33 (distinguishing “cylinder(s) operating under ignition retard/high fuelling rate conditions” with other cylinder(s) operating under “normal conditions”). In other words, a particular cylinder during a given cycle is operating either normally or is “so retarded,” according to the claimed method. Patent Owner offers no persuasive argument or evidence that one of ordinary skill in the art would understand the state of being ignition-retarded applies to only the portion of a cycle occurring ATDC, or would understand the claim to require a cylinder, during the same cycle, to be in both a normal operating state (in the BTDC range) and in an ignition-retarded state (in the ATDC range). Cf. Tr. 32:1–23 (counsel for Patent Owner confirming that, before the start of a cycle, the status of being ignition-retarded or operating normally is known).” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for patent owner
“II. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner maintains that a person of ordinary skill in the art “would have at least an undergraduate degree in mechanical engineering or a similar technical field and at least two (2) years of relevant work experience or equivalent advanced education in a field related to engine control technology.” IPR2015-01258 (related case), Paper 3, 3 n.1.2 Patent Owner adopts, for purposes of this proceeding, Petitioner’s proposed definition of the ordinary artisan. PO Resp. 12 n.2. Based on our review of the record, we too adopt Petitioner’s assessment of the level of ordinary skill in the art. 2 Petitioner, in this case, utilizes a slightly different articulation of the level of ordinary skill in the art. See Pet. 3 n.1. The differences do not affect the outcome.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“We are persuaded by Petitioner’s contentions with respect to these three obviousness grounds based on Hitomi and Onishi (Pet. 11–27), and we adopt them as our own. We determine that Petitioner has demonstrated by a preponderance of the evidence that the combination of Hitomi and Onishi renders obvious claims 1, 9, 10, 13, 14, and 18; that the combination of Hitomi, Onishi, and Eichler ’089 renders obvious claim 5; and that that the combination of Hitomi, Onishi, and Takada renders obvious claim 12.” slip op. at 26
Patent outcomesUS 5,655,365 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 5,655,365 - Inguran, LLC D/B/A Sexing Technologies v. Premium Genetics (UK) Ltd.All claims unpatentablePTAB · Dec 20, 2016 · PGR2015-00017 · APJ Kristen L Droesch · PGR · Final written decision
Claim 1 is unpatentable under § 102(a)(1) as anticipated by Durack, Mueth, and Frontin-Rollet.
RulingsFinal written decision- Adverse judgmentAdverse judgmentOther
“On September 16, 2016, Patent Owner filed a disclaimer for claims 2–14 of the ’395 Patent, pursuant to 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a). Ex. 2007. Therefore, only claim 1 (“the remaining challenged claim”) is at issue.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“1. “Channel” For purposes of the Institution Decision, the Board construed “channel” as “a long gutter, groove, or furrow.” Dec. Inst. 6–7. Patent Owner relies on testimony by Petitioner’s expert, Dr. Vacca, to assert that “channel” should be construed as “a hollow member for conveying fluids.” PO Resp. 14 (citing Ex. 1002, 153; Ex. 2006, 17:17–18:12). In response, Petitioner contends that Patent Owner provides no support for its contention that a channel must convey and not collect. See Pet. Reply 17. We are not persuaded by Patent Owner’s arguments that a “channel” must convey fluid. At deposition, Dr. Vacca explained, “a hollow member for conveying fluids” “is a definition that I have supplied . . . as one of the definitions of channel that I have . . . provided here.” Ex. 2006, 17:22–18:4. Although Patent Owner provides testimony regarding one definition for “channel,” Patent Owner does not provide evidence sufficient to demonstrate that “a hollow member for conveying fluids” is the broadest reasonable interpretation of “channel.” We maintain the construction of the broadest reasonable interpretation of “channel” as “a long gutter, groove, or furrow,” (see Dec. Inst. 6) which encompasses within its scope “a hollow member for conveying fluids.”” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“In view of the broadest reasonable interpretation of “said plurality of buffer channels which are disposed on either side of said first input channel” discussed above in Section II.A.2, on this record, we disagree with Patent Owner’s arguments. We are persuaded that Petitioner has established by a preponderance of the evidence that Durack discloses this claim limitation based on radial bores 173 and 183 disposed on one side of conduit 157 (i.e., the exterior circumferential bounding surface of conduit 157). See Ex. 1005, Fig. 5.” slip op. at 20
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“In light of Patent Owner’s position that it met its burden of production in the Preliminary Response, we return to the positions advanced by the parties. As discussed briefly above, Petitioner asserted that the at least one channel limitation recited in claim 1 was not disclosed in the manner required by § 112(a) in any of the patent applications filed before March 16, 2013 (i.e., the ’969 Application and the ’957 Application). See Pet. 12–17. Patent Owner, in its Preliminary Response, argued that there was adequate written description support for the at least one channel limitation of claim 1. See Prelim. Resp. 8–13 (citing Ex. 1001, Fig. 1, 13:21–23; Ex. 1004, 11:66–12:4, 16:22–25). Patent Owner, however, does not address the remaining limitations of claim 1 and whether the prior applications disclose those remaining limitations in the manner required by § 112(a). See PO Resp. 3–6; Prelim. Resp. 7–13. Patent Owner, at oral argument, acknowledged that just one limitation of claim 1 was addressed in the Preliminary Response because it was the only limitation disputed by Petitioner. See Tr. 24:16–25:2. Although Petitioner arguments addressing standing for post-grant review only disputed written description support for the at least one channel limitation of claim 1, we are not aware of any obligation on the part of Petitioner to address whether each and every limitation of claim 1 was disclosed in the manner required by § 112(a). In contrast, in order for Patent Owner to show entitlement to an earlier effective filing date, Patent Owner must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, possession of the invention now claimed by describing the invention, with all its claimed limitations. See Lockwood, 107 F.3d at 1572; VasCath, 935 F.2d at 1563–64. Patent Owner’s arguments addressing only the at least one channel limitation of claim 1 (see PO Resp. 3–6; Prelim. Resp. 7–13) are insufficient to meet Patent Owner’s burden of coming forward with evidence or argument to show possession of the invention, with all its claimed limitations, as of the September 3, 2004 filing date. For all of the foregoing reasons, Patent Owner has not shown sufficiently that the ’395 Patent is entitled to an earlier effective filing date of September 3, 2004. Thus, Mueth and Frontin-Rollet remain prior art to the ’395 Patent.” slip op. at 33
Patent outcomesUS 8,933,395 unpatentableClaim construction§ 102 anticipation§ 112 disclosurePatents in suitUS 8,933,395 - Bixolon Co., Ltd. v. Shinheung Precision Co., Ltd.Rehearing deniedPTAB · Dec 6, 2016 · IPR2016-01068 · APJ Amanda F Wieker · IPR · Rehearing
The Board denied Bixolon’s rehearing request, leaving in place the denial of institution on claims 1–18 because the Petition did not explain how Hosomi’s optical detector could be combined with its contact-based structures.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“feasible” for these structures to be used together. Id. at 14. The Board found, however, that the structure Petitioner relies upon to satisfy the claimed “position adjusting means”—bolt 25 and hole 72—“appears mutually exclusive to Hosomi’s ‘means for optically detecting.’” Id. at 12. The Board found that the Petition, and the cited expert testimony of Mr. Charles Curley (Ex. 1006), failed to explain persuasively whether it would have been obvious to a person of ordinary skill in the art to utilize Hosomi’s “means for optically detecting” with the disclosed and relied-upon structure of Hosomi’s contact-based detector 24, including bolt 25 and hole 72, because those structures appear mutually exclusive to each other. Dec. 13– 14. Petitioner’s Request for Rehearing does not inform us of error in that regard. It is Petitioner’s burden, not the Board’s obligation, to demonstrate how the claims are unpatentable over the prior art of record. See 37 C.F.R. § 104(b)(4); Hopkins Mfg. Corp. v. Cequent Performance Prods., Inc., IPR2015-00609, Paper 9, 12 (PTAB Aug. 14, 2015) (“While it might be possible for us to arrive at an articulable ground by sifting through Petitioners’ identifications of grounds, the claim charts, the references, and the numerous cited paragraphs of the expert declaration . . . we decline to do so.”). On the facts of this case, Petitioner’s vague statements about how Hosomi’s structure may be modified (e.g., to replace contact-based detecting element 64 with an optical detector), without addressing the impact of that modification on other related structures (e.g., limit switch 67, actuating lever 63, supporting frame 62, hole 72/bolt 25), does not satisfy this burden. See, e.g., Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM2012- 00003, Paper No. 8, 10 (PTAB Oct. 25, 2012) (“[W]e will address only the basis, rationale, and reasoning put forth by the Petitioner in the petition, and resolve all vagueness and ambiguity in Petitioner’s arguments against the Petitioner.”).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“feasible” for these structures to be used together. Id. at 14. The Board found, however, that the structure Petitioner relies upon to satisfy the claimed “position adjusting means”—bolt 25 and hole 72—“appears mutually exclusive to Hosomi’s ‘means for optically detecting.’” Id. at 12. The Board found that the Petition, and the cited expert testimony of Mr. Charles Curley (Ex. 1006), failed to explain persuasively whether it would have been obvious to a person of ordinary skill in the art to utilize Hosomi’s “means for optically detecting” with the disclosed and relied-upon structure of Hosomi’s contact-based detector 24, including bolt 25 and hole 72, because those structures appear mutually exclusive to each other. Dec. 13– 14. Petitioner’s Request for Rehearing does not inform us of error in that regard. It is Petitioner’s burden, not the Board’s obligation, to demonstrate how the claims are unpatentable over the prior art of record. See 37 C.F.R. § 104(b)(4); Hopkins Mfg. Corp. v. Cequent Performance Prods., Inc., IPR2015-00609, Paper 9, 12 (PTAB Aug. 14, 2015) (“While it might be possible for us to arrive at an articulable ground by sifting through Petitioners’ identifications of grounds, the claim charts, the references, and the numerous cited paragraphs of the expert declaration . . . we decline to do so.”). On the facts of this case, Petitioner’s vague statements about how Hosomi’s structure may be modified (e.g., to replace contact-based detecting element 64 with an optical detector), without addressing the impact of that modification on other related structures (e.g., limit switch 67, actuating lever 63, supporting frame 62, hole 72/bolt 25), does not satisfy this burden. See, e.g., Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM2012- 00003, Paper No. 8, 10 (PTAB Oct. 25, 2012) (“[W]e will address only the basis, rationale, and reasoning put forth by the Petitioner in the petition, and” slip op. at 3
- BurdenDecided for patent owner
“feasible” for these structures to be used together. Id. at 14. The Board found, however, that the structure Petitioner relies upon to satisfy the claimed “position adjusting means”—bolt 25 and hole 72—“appears mutually exclusive to Hosomi’s ‘means for optically detecting.’” Id. at 12. The Board found that the Petition, and the cited expert testimony of Mr. Charles Curley (Ex. 1006), failed to explain persuasively whether it would have been obvious to a person of ordinary skill in the art to utilize Hosomi’s “means for optically detecting” with the disclosed and relied-upon structure of Hosomi’s contact-based detector 24, including bolt 25 and hole 72, because those structures appear mutually exclusive to each other. Dec. 13– 14. Petitioner’s Request for Rehearing does not inform us of error in that regard. It is Petitioner’s burden, not the Board’s obligation, to demonstrate how the claims are unpatentable over the prior art of record. See 37 C.F.R. § 104(b)(4); Hopkins Mfg. Corp. v. Cequent Performance Prods., Inc., IPR2015-00609, Paper 9, 12 (PTAB Aug. 14, 2015) (“While it might be possible for us to arrive at an articulable ground by sifting through Petitioners’ identifications of grounds, the claim charts, the references, and the numerous cited paragraphs of the expert declaration . . . we decline to do so.”). On the facts of this case, Petitioner’s vague statements about how Hosomi’s structure may be modified (e.g., to replace contact-based detecting element 64 with an optical detector), without addressing the impact of that modification on other related structures (e.g., limit switch 67, actuating lever 63, supporting frame 62, hole 72/bolt 25), does not satisfy this burden. See, e.g., Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM2012- 00003, Paper No. 8, 10 (PTAB Oct. 25, 2012) (“[W]e will address only the basis, rationale, and reasoning put forth by the Petitioner in the petition, and resolve all vagueness and ambiguity in Petitioner’s arguments against the Petitioner.”).” slip op. at 3
NonePatents in suitUS 6,629,666 - Camelbak Products, LLC v. Ignite USA, LLCRehearing deniedPTAB · Sep 30, 2016 · IPR2015-01034 · APJ Amanda F Wieker · IPR · Rehearing
The Board denied the patent owner’s rehearing request, leaving claim 7 unpatentable under § 103(a) and claims 1, 3, 6, and 10–15 unpatentable under § 102(b).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A request for rehearing must identify specifically all matters the party believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“that the proposed modification to the shape or size of Oosterling’s spring would have “detrimental effects” on Oosterling’s lid design, “including precluding proper attachment of the lid 4 to the beaker.’” Req. Reh’g 10. This argument was not overlooked; rather, Patent Owner has not explained persuasively how a modified spring would preclude proper lid attachment. As discussed above and in our Final Written Decision, we are unpersuaded of the lid and/or opening.” See Final Dec. 33–34 (emphasis added); Req. Reh’g 5–6 n.5; PO Resp. 43. This is a typographical error. We note, however, that our Final Written Decision addresses Patent Owner’s actual argument that the lever will impact the “side” of the lid and/or opening. Final Dec. 33–34 (“Patent Owner provides no technical reasoning to explain how a spring modified as proposed by Petitioner would be ineffective to pivot 90 degrees due to impact with . . . the side[] of the lid or opening.”). 4 Similarly, the cited testimony of Mr. Steininger is unpersuasive because it only addresses a change in the spring’s “length,” where the proposed modification involves a change to the spring’s “shape or size.” Req. Reh’g. 9 (citing Ex. 2006, 278:22–284:21); Final Dec. 31. This testimony does not show that the claimed pivoting would be prevented with a change in shape or size. that Oosterling’s lever would impact the side of Oosterling’s lid, opening, or seal, because Patent Owner’s argument in this regard does not account for a modified spring as proposed. See Final Dec. 33–34. Further, as explained in our Final Written Decision, we are unpersuaded by Patent Owner’s contention that the proposed modification would eliminate the disclosed interference fit between Oosterling’s lever and opening. Compare Req. Reh’g 10–11, with Final Dec. 33 n. 10. Patent Owner has not presented any technical analysis or compelling evidence showing that changing the shape or size of Oosterling’s spring would eliminate the interference fit disclosed by Oosterling. See PO Resp. 42–46 (arguing that changing the size of Oosterling’s opening would eliminate the interference fit, but making no such argument with respect to a change in shape or size of the spring).” slip op. at 6
§ 103 obviousnessPatents in suitUS 8,863,979 - Praxair Distribution, Inc. v. Ino Therapeutics, LLCNo claims unpatentablePTAB · Sep 15, 2016 · IPR2015-00891 · APJ Scott A Daniels · IPR · Final written decision
Praxair failed to prove claims 1–16 unpatentable under the three §103 grounds because it did not establish a sufficient reason to combine the prior art.
RulingsFinal written decision- BurdenFwd all claims patentableNot shown unpatentable
“sensed in-line gas concentration being used to perform verification of gas supply and gas delivery to a subject or patient into a device receiving gas concentration information from Peters’s handle and memory on the gas supply cylinder in order to verify and control gas delivery to a patient smacks of hindsight reasoning. After considering the evidence and arguments of both parties, we conclude that Praxair has failed to carry its burden of demonstrating, by a preponderance of the evidence, that independent claim 1 is unpatentable. Because Praxair’s obviousness analysis for dependent apparatus claims 2–11, as well as the dependent method claims 12–16, asserted in each of the grounds in this proceeding relies on the deficient asserted combination including Bathe and Peters, we similarly are not persuaded that Praxair has sustained its burden of demonstrating, by a preponderance of the evidence that claims 2–16 are unpatentable.” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“argument and testimony that Peters’s valve could work on Bathe’s cylinder does not explain why or how a person of skill in the art would combine Bathe and Peters, only that they could. PO Resp. 43–44. That Bathe could be modified by simply placing Peters’s valve on the cylinder to control gas flow from the cylinder, does not, alone, satisfy the requirements for combining the prior art. See InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014) (Experts “testimony primarily consisted of conclusory references to her belief that one of ordinary skill in the art could combine these references, not that they would have been motivated to do so.”). Petitioner’s challenge lacks an adequate motivation, not only to incorporate the smart valve of Peters into Bathe, but also to: (1) repurpose the incorporated valve by using (a) its “memory to store gas data comprising one or more of gas identification, gas expiration date and gas concentration” and (b) its processor and transmitter “to send and receive wireless optical line-of-sight signals to communicate the gas data to the control module that controls gas delivery to a subject” and (2) modify the Bathe system, such that its CPU would receive the wirelessly transmitted gas concentration data, even though the CPU already receives (and uses) flow and operator input data to provide a desired NO concentration. See Ex. 1005, 6:5–20.” slip op. at 21
- Expert testimonyPetitioner expert discountedOther
“read [Bathe] and been motivated to apply subsequent improvements to component parts of that system, such as the improved valve of [Peters].” Ex. 1002 at ¶ 112 (citing Ex. 1005, 6:11–15). Dr. Stone does not, however, point to any persuasive evidence or disclosure in Bathe, or provide sufficient explanation or reasoning to support this statement. See id. In particular, Dr. Stone does not describe what the “improvements” would have been or provide sufficient rationale as to why Bathe, which already has a connection between a supply cylinder and a gas delivery device and teaches verification of gas concentration from the cylinder by sensor 65 in the delivery system, would be improved by Peters’s manually actuated valve handle and included memory to meet the limitations of the independent claims. See Ex. 1005, 6:11–15. We find Dr. Stone’s testimony deficient as to showing any suggestion in Bathe or otherwise that would have motivated one of skill in the art to add Peters’s valve and memory to Bathe. We are also not persuaded that a person of skill in the art would have” slip op. at 23
- ExcludeMotion to exclude, deniedDenied
“D. INO’s Motion to Exclude Patent Owner seeks to exclude the testimony of Dr. Robert Stone (Exs. 1002, 2020). Because we do not rely on Dr. Stone’s testimony in a manner adverse to INO, the motion to exclude is dismissed as moot.” slip op. at 28
Patent outcomesUS 8,573,210 not shown unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,573,210
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.