- PTAB · Dec 11, 2015 · IPR2015-00605 · APJ Ken B Barrett · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment and ordered claims 1–8 canceled.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). Pursuant to 37 C.F.R. § 42.73(b)(4), “[a]bandonment of the contest” is construed as a request for adverse judgment. Accordingly, we interpret Patent Owner’s Notice as a request for adverse judgment. Under these circumstances, the entry of judgment adverse to the Patent Owner and cancellation of the claims is appropriate. Accordingly, it is: ORDERED that Patent Owner’s request for adverse judgment under 37 C.F.R. § 42.73(b) with respect to claims 1–8 of U.S. Patent No. 6,837,551 B2 is granted; and FURTHER ORDERED that claims 1–8 of U.S. Patent No. 6,837,551 B2 shall be canceled.” slip op. at 2
NonePatents in suitUS 6,837,551 - Infomotion Sports Technologies, Inc. v. Pillar Vision, Inc.All claims unpatentablePTAB · Nov 12, 2015 · IPR2014-00764 · APJ Ken B Barrett · IPR · Final written decision
Claims 1–11, 15, and 17–26 are unpatentable as obvious over the stated combinations of Marinelli, Mullaney, and the additional references.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The claim recites “one or more,” thus encompassing a single location, whereas Patent Owner’s construction would require measurement at a plurality of “trajectory locations.” See Reply 21; PO Resp. 12. Petitioner’s proposed construction—where the phrase containing the phrase “trajectory locations” modifies the earlier use of that same phrase—is a more natural reading of the claim language. Contrary to Patent Owner’s arguments (PO Resp. 11), we do not view Petitioner’s construction as reading out the emphasized phrase from the claim. Petitioner’s broader construction is consistent with the description in the specification. For example, the specification provides: “Using the curve-fit, trajectory parameters, such as an entry angle 211 and the entry velocity 212 of the object as it enters the hoop, is near the hoop or at other states along the trajectory may be generated.” Ex. 1001, col. 16, ll. 34–37.” slip op. at 7
- ExcludeMotion to exclude, deniedDenied
“After considering both parties arguments, we agree with Patent Owner that Petitioner’s assertions in its Motion go to the weight we should give the evidence at hand. We are not persuaded that exclusion of the table and related testimony is necessary under our rules or is needed to remedy possible prejudice to Petitioner.2 Accordingly, we deny Petitioner’s Motion to Exclude.” slip op. at 9
- Expert testimonyDecided for patent owner
“After considering both parties arguments, we agree with Patent Owner that Petitioner’s assertions in its Motion go to the weight we should give the evidence at hand. We are not persuaded that exclusion of the table and related testimony is necessary under our rules or is needed to remedy possible prejudice to Petitioner.2 Accordingly, we deny Petitioner’s Motion to Exclude.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We conclude that Petitioner has established by a preponderance of the evidence that the teachings of Marinelli and Mullaney account adequately for all the features of the independent claims, and a skilled artisan would have had adequate reason to combine those teachings. We are persuaded that one would have had reason to apply the teachings of Mullaney in relation to entry angles and velocities, in the context of basketball, to the teachings in Marinelli. We have reviewed all of Patent Owner’s arguments against this ground and address its principal arguments below.” slip op. at 14
Patent outcomesUS 8,622,832 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,622,832 - Stryker Corporation v. Karl Storz Endoscopy-America, Inc.Institution deniedPTAB · Sep 2, 2015 · IPR2015-00764 · APJ Ken B Barrett · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted anticipation or obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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 ’657 patent.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“translator is within the surgical network5 and the signals pass without translation from that surgical network to the ancillary network, to which the ancillary medical devices are connected. See Ex. 1003, col. 6, ll. 26 (element 146 merely is a communication link). Petitioner argues that, because “[t]he control units 50 and 52 may provide output signals and commands that are incompatible with a computer,” the articulate arms (the ancillary medical devices) are not connectable with control units 50 and 52 absent translation. Pet. 14–15 (quoting Ex. 1003, col. 6, ll. 29–30). However, this argument is misplaced as the pertinent claim limitation is concerned with the “connectable” relationship between the ancillary device and the surgical network and Petitioner has included the purported translator within the surgical network. We determine that Petitioner has not explained adequately how the ancillary medical device is not connectable to the surgical network as required by independent claims 21 and 61. Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that Ghodoussi anticipates independent claims 21 and 61 and the respective dependent claims 22, 28–31, 35, 62, 68–71, and 75.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“referring to the “networks” identified by Petitioner in its Ghodoussi anticipation ground. In that scenario, we fail to see, and Petitioner does not adequately explain, why it would be obvious to add a translator to redundantly perform the function that Petitioner maintains is performed by the interconnect devices and network computer located within the surgical network. See id. Although Petitioner asserts one would have known how to use a translator “if needed,” Petitioner has not explained adequately why it would have been needed or why it would have been obvious to do modify Ghodoussi’s system to have a translator. Id. We have considered but find unpersuasive Petitioner’s argument that Ghodoussi provides a teaching, suggestion, or motivation through its recognition that different devices may communicate using different protocols. Pet. 55. Without more elaboration from Petitioner, we are left to speculate as to whether Petitioner is proposing a combination where different protocols are used. We determine that Petitioner has not set forth adequately an articulated rationale based on rational underpinning for combining the references’ teachings so as to render obvious the subject matter of the challenged claims.” slip op. at 13
§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,844,657 - Tuftco Corp. v. Card-Monroe Corp.Institution deniedPTAB · Jul 22, 2015 · IPR2015-00505 · APJ Ken B Barrett · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–19 were unpatentable under either asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . 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.” For the reasons that follow, we deny the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“construction.” Pet. 12; Prelim. Resp. 12. We do not see a need to incorporate what appears to be an area component into an otherwise linear measurement. For purposes of this Decision, we construe “prescribed stitch rate” and “desired fabric stitch rate” as meaning the number of stiches per inch in the longitudinal direction, where that number is approximately equal to the number of needles per inch in the transverse direction across the tufted article.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“attachment to pull yarn low or out of the backing in locations where the particular yarn color is not to be visible. See Ex. 1001, col. 6, l. 67–col. 7, l. 5. Independent claim 1, with emphasis added, recites the step of “selectively controlling feeding of the yarns to the needles in accordance with the shift profile of the pattern for the article to form high tufts of yarns and to pull back loops of yarns as desired.” Petitioner identifies as the only distinction between the subject matter of claim 1 and Kaju that “claim 1 states that yarn loops are pulled back, while Kaju[] never tufts those yarn loops that are to be pulled back to a low height or out of the backing entirely.” Pet. 22. Petitioner argues: Although the method described in detail in Kaju-723 does not include the selective controlling of yarns to create high tufts of yarn and to pull back loops of yarn, it does contemplate that possibility of providing this feature by “controlling the length of yarn fed to the needle in each stroke cycle.” Id. at 21 (citing Kaju, 5:19–24). Petitioner points out that, in Kaju, yarn is not fed to non-selected needles. Id. at 21–22. Petitioner’s expert explains that “[i]n the ICN technique of Kaju-723, it is not necessary to pull back loops of yarn, because the loops that would be pulled back are never tufted through the backing fabric.” Ex. 1004 ¶ 53. Thus, Kaju avoids the visibility of non-desired colors by not feeding such yarn to the backing. We fail to 10 see, and Petitioner does not adequately explain, how Kaju’s disclosure of controlling the length of the yarn fed “contemplate[s]” selective controlling of the yarn to pull it back. Petitioner does not rely on any admitted prior art for this feature. See Pet. 21–23, 30. We determine that Petitioner has not offered persuasive argument or evidence to support the conclusion that a person of ordinary skill in the art would have found it obvious to selectively control feeding of yarn to pull back loops of yarn as recited in claim 1.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“any admitted prior art teach forming tufts at an increased effective process stitch rate or effective stitch rate. Prelim. Resp. 39–40; see id. at 22–24. We agree. Petitioner relies on Kaju for this feature. Pet. 22; see also id. at 25– 26 (referring, for claim 8, to its arguments regarding claim 1). Petitioner asserts that, in a hypothetical situation applied to Kaju, “[t]he number of tufts of yarn formed in the backing material by Kaju-723 is the same as with conventional needle bar tufting in a square construction,” but argues Kaju utilizes more needle strokes to obtain this tuft density thereby satisfying the claimed effective rate limitation. Id. Petitioner’s arguments—in terms of 11 area (square construction) and needle bar strokes—are premised on its incorrect claim constructions for prescribed/desired stitch rate and effective process stitch rate. Accordingly, Petitioner’s arguments are not commensurate in the scope with the properly construed claim, and therefore are not persuasive. Petitioner has not met its burden with regard to either independent claim 1 or independent claim 8. In addressing the remaining challenged claims, all of which depend from one of these independent claims, Petitioner does not present any persuasive argument or evidence that cures the underlying defects concerning the independent claims. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claims 1–19 are unpatentable over Kaju and admitted prior art.” slip op. at 11
Claim construction§ 103 obviousnessPatents in suitUS 8,141,505 - Clariant Corporation v. CSP Technologies, Inc.All claims unpatentablePTAB · Jun 10, 2015 · IPR2014-00375 · APJ Phillip J Kauffman · IPR · Final written decision
Claims 1–7 are unpatentable as anticipated by Hekal ’108 and as obvious over Wheeler with one of Hekal ’108, Hekal ’937, or Sacherer.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“wherein the flexible lip seal member is designed to be sufficiently deflective so as to provide a sealing position, when the skirt of the lid is closed over the top container, which results in a substantially moisture proof seal between the lid and the container. Claim 1 does not state explicitly that the flexible lip seal member is deflected when in the closed position, nor does claim 1 specify a minimum amount of deflection in the form of a quantitative amount of deflection. Rather, claim 1 states that the flexible lip seal member has the characteristic of being “sufficiently deflective” so as to provide a sealing position (when closed) that is substantially moisture proof. In doing so, claim 1 defines sufficiently deflective as the characteristic of being deflective enough to provide a substantially moisture proof seal. That is, the flexible lip seal member is “sufficiently deflective” as claimed so long as it provides a substantially moisture proof seal between the lid and the container, even if it is not deflected.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“deflection of a flexible lip seal member (annular seal 74). PO Resp. 24˗29. Specifically, Patent Owner contends that a person of ordinary skill would not understand that seal 74 is thicker than gap 81 because the reference uses the terms “about” and “ranging from” to describe the dimensions, and because Petitioner has “cobbled together” dimensions from different parts of the reference. PO Resp. 24˗25. Further, Patent Owner contends that a container having the dimensions provided by Petitioner would not be closeable or resealable, and the force required for closing would deform and damage the container. Id. at 25˗29 (citing to and explaining finite element analysis performed by Dr. Oswald on a container having the dimensions provided by Petitioner). Patent Owner asks us to interpret Hekal ’108 to disclose a container that cannot be closed or resealed, and when closed, would be deformed and damaged to the extent that the container is rendered unusable. This contention not supported by the references. Neither Hekal ’108 nor Abrams describes the container as disposable or otherwise suitable for only a single use. Exs. 1015, 1016, passim. Abrams explicitly indicates that the container may be closed by describing that the vial provides a substantially hermetic seal when closed. Ex. 1016, 1:12˗15. Hekal ’108 describes the container as” slip op. at 19
- Expert testimonyPatent owner expert discountedDecided for patent owner
“Dr. Oswald’s finite element analysis suffers from several shortcomings. First, the analysis assumes the container and lid are made of polypropylene, although the reference discloses that the container is preferably made of polypropylene and the lid is made from polyethylene (a more flexible material). See Ex. 2001 ¶ 53–54 (relying on polypropylene for the container and lid); Ex. 1015, 2:29˗34; 4:28˗3013 (stating that the container is polypropylene and the optional lid is preferably polyethylene); 13 At oral hearing, Patent Owner was asked to identify support for the assertion that the container and lid are both formed of polypropylene as used by Dr. Oswald’s analysis. Tr. 68. Patent Owner identified the sections of Exhibit 1015 cited here, neither of which supports Patent Owner’s contention. Id. Pet. Reply 5; Ex. 1027, 154:8–9 (conceding that polyethylene is more flexible than polypropylene). Second, Patent Owner takes the somewhat inconsistent position of contending that the dimensions are not accurate and then asks that we consider test results based upon a container having such dimensions. Third, Dr. Oswald presumed the lid was closed straight down, while the reference discloses that the hinge angles the cap to permit a progressive closing rather than straight down. See Pet. Reply 6; Ex. 1029 ¶¶ 8˗10.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“measurement of Wheeler’s Figure 7. Rather, Mr. Sheehan illustrated with a dotted line that, when closed, sealing bead 20' of flange 19' interferes with neck 2' of container 1', causing flange 19' to deflect inward and it seal the inside surface of neck 2'. See Ex. 1008 ¶ 82 (at pages 71˗72); Pet. 52 (citing to this portion of Ex. 1008); Pet. Reply 11. Mr. Sheehan’s analysis of Figure 7 is proper because drawings may be used to establish relative sizes and relationships between the various components which are clearly depicted therein, such as the relationship between flange 19 and the interior of neck 2 of container 1. See Vas-Cath Inc. v. Mahurkar, 935 F2d 1555, 1565 (Fed. Cir 1991); see also In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972) (things that patent drawings show clearly are not disregarded); In re Aslanian, 590 F.2d 911, 914 (CCPA 1979) (citation omitted) (“[drawings are evaluated] ‘on the basis of what they reasonably disclose and suggest to one skilled in the art”’). Further, Petitioner’s assertion that flange 19' corresponds to a flexible lip seal member as claimed is based upon more than just Wheeler’s Figure 7. Contra PO Resp. 39 (contending that Petitioner’s entire position is based upon Figure 7 of Wheeler). Petitioner correctly notes that Wheeler discloses a substantially moisture proof container that includes a cap 7' formed of a resilient material and having internal flange 19', suggesting flange 19' is flexible and may be deflected. Pet. 49, 52; Ex. 1023, 3:4˗8. Petitioner also correctly explains that Wheeler discloses that internal flange 19' with bead 20' creates a fluid-tight seal inside the mouth of neck 2' of container 1'. Pet. 49, 52 (citing Ex. 1023, 4:27˗31, Figs 7, 8; Ex. 1008 ¶ 82). Similar to the argument against the prior ground of unpatentability, Patent Owner asks us to interpret the reference as disclosing a container that cannot be closed properly and if closed, would be deformed. This contention is not supported by the reference. Wheeler does not describe container 1' as disposable or otherwise suitable for only a single use. Ex. 1023, passim. To the contrary, Wheeler describes a cap and container assembly for medicines that is child-proof, so that once reclosed the cap can only be removed with ease by an adult. Ex. 1023, 1:4˗2:24; see also 3:18˗45 (describing alignment that permits reopening the container). Patent Owner’s contention that Wheeler’s container cannot be closed or is deformed by closing is further undermined by Wheeler’s express disclosure of how cap 7' is positioned when closed. Specifically, Wheeler discloses that shoulder 17' retains anchor band 21 on container 1' by engaging under lower bead 5 to retain anchor band 21 on container 1'. Ex. 1023, 3:65˗ 4:9, Figs. 7, 8. A preponderance of the evidence suggests that flange 19' corresponds” slip op. at 26
Patent outcomesUS 8,528,778 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,528,778 - Daifuku Co., Ltd. / Daifuku America Corp. v. Murata Machinery, Ltd.Institution deniedPTAB · May 4, 2015 · IPR2015-00084 · APJ Brian P Murphy · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 6–14 obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the reasons given above, we are not persuaded by a preponderance of the evidence that Petitioner has shown a reasonable likelihood of prevailing in its challenge that claims 6, 7, 9–11, and 14 of the ’153 patent would have been obvious to a person of ordinary skill in the art at the time of the invention over JPAP 216 and JPAP 237.” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“The claim language requires the translating stage to be configured to move the gripper laterally (horizontally) after the overhead transport vehicle has positioned the translating stage and gripper “adjacent to” the storage bin. The gripper moves laterally such that it can “directly access” the material unit in the adjacent storage bin. The claimed system, taken as a whole, is not defined in such a way as to prevent the gripper from having rotational or angular movement, as argued by Patent Owner, as long as the gripper moves laterally to grip the stored material unit.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“We further agree with Patent Owner that Petitioner has not provided persuasive evidence of a reason why a person skilled in the art of AMHS would have been motivated to combine JPAP 216 and JPAP 237 in the manner asserted by Petitioner, with a reasonable expectation of success. Prelim. Resp. 21–26. Petitioner generally describes how the two references could be combined to meet the claim limitations, but Petitioner does not explain why a person of ordinary skill in the art would have combined JPAP 216 and JPAP 237 “‘in the way the claimed invention does.’” Id. at 22 (citing ActiveVideo Networks, Inc. v. Verizon Communications, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012)). In particular, we are not persuaded that Petitioner has explained why a person of skill in the art would want to add an overhead hoist to the AMHS of JPAP 216. The AMHS of JPAP 216 utilizes the vertical motion of the storage carousel to move the pods, and there is no indication in JPAP 216, JPAP 237, or Petitioner’s analysis of why an overhead hoist would be necessary or beneficial to the functioning of an AMHS of the type disclosed in JPAP 216. Id. at 27–28. Although Petitioner consistently paraphrases the tests for obviousness set forth by the Supreme Court in KSR, we agree with Patent Owner that such paraphrasing cannot substitute for factual analysis and application of the particular facts and evidence of this case according to the analytical framework set out in KSR. Id. at 22. For example, Petitioner argues that modifying the system disclosed in JPAP 216 to use the extendable arm and hoist disclosed in JPAP 237 “would have been merely an arrangement of old elements with each performing the same function it had been known to perform, yielding no more than one would expect from such an arrangement, and this conclusion is supported by logic, judgment, and common sense.” Pet. 23 (citing Ex. 1028 ¶ 61). Although the quoted statement is consistent with KSR, neither Petitioner nor Dr. Sturges provides the important analysis of explaining why, based on the particular facts and evidence of the present case, one of ordinary skill would have made the suggested modification or why the logic, judgment, and common sense of such a person would have led to the asserted combination with a reasonable expectation of success. A review of the cited testimony from paragraphs 60 and 61 of Dr. Sturges’s Declaration reveals similarly conclusory testimony, unsupported by a specific engineering and technical analysis of how the asserted combination would have worked and why it would have been an obvious combination to one of skill in the art. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”) (Quoted with approval in KSR, 550 U.S. at 418). Perhaps the most relevant evidence relied upon by Petitioner is found in one sentence from paragraph 62 of Dr. Sturges’s Declaration. “[T]he motivation to modify is self-evident from the problem that needed to be resolved – moving article 40 from port 28 to station 56.” Pet. 24 (citing Ex. 1028 ¶ 62). Dr. Sturges, however, does not explain why such a problem existed – JPAP 216 does not indicate such a problem – or precisely how and why it would have been resolved by a person of skill in the art in the manner claimed in the ’153 patent. The quoted sentence, by itself, is far from sufficient to satisfy Petitioner’s burden of persuasion on the question of obviousness. We find that “[t]he expert failed to explain how specific references could be combined, which combination(s) of elements in specific references would yield a predictable result, or how any specific combination would operate or read on the asserted claims.” ActiveVideo Networks, 694 F.3d at 1327.” slip op. at 15
- Expert testimonyPetitioner expert discountedDecided for patent owner
“vehicle that can move articles vertically to a processing station as stated by Petitioner. Prelim. Resp. 18–19. We agree with Patent Owner. In JPAP 216 Figure 1, vertical movement of the storage shelves is performed by the vertical carousel stocker. Id. at 19–20 (citing Ex. 1007, Fig. 3); Ex. 1007, ¶ 10, Fig. 1. Vertical movement of the ceiling vehicle is not necessary, or in any way indicated, to move the pods vertically from port 28 to work station 56 as argued by Petitioner. Id. at 19–20 (citing Ex. 1007, Fig. 3); Ex. 1007 ¶¶ 13, 15, 17–19. Petitioner’s reliance on paragraph 58 of Dr. Sturges’s Declaration (Pet. 22) is not persuasive, because it makes the conclusory statement that a person skilled in the art would have recognized that transfer device 38 “must have the capability to move . . . vertically to effect transfer of the article 40 to both port 28 and station 56,” without explaining why. Ex. 1028 ¶ 58. The quoted statement, moreover, appears to be at odds with the drawings and description of JPAP 216, as explained by Patent Owner. Prelim. Resp. 19–20. In the absence of any engineering and design analysis of the AMHS disclosed in JPAP 216 to support the quoted statement, we give it no weight.” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,771,153 - Daifuku Co., Ltd. / Daifuku America Corp. v. Murata Machinery, Ltd.Institution deniedPTAB · May 4, 2015 · IPR2015-00087 · APJ Brian P Murphy · IPR · Institution
The Board denied institution because Petitioner failed to show a reasonable likelihood of proving claims 6–14 obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“III. CONCLUSION Petitioner has failed to demonstrate a reasonable likelihood of prevailing with respect to at least one of the claims challenged in this Petition, based on the grounds asserted and information presented therein. IV. ORDER For the reasons given, it is ORDERED that the Petition is denied.” slip op. at 18
- BurdenDenied
“For the reasons given above, we are not persuaded by a preponderance of the evidence that Petitioner has shown a reasonable likelihood of prevailing in its challenge that claims 6, 7, 9–11, and 14 of the ’153 patent would have been obvious to a person of ordinary skill in the art at the time of the invention over JPAP 216 and JPAP 237.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“persuasive evidence of a reason why a person skilled in the art of AMHS would have been motivated to combine JPAP 216 and JPAP 237 in the manner asserted by Petitioner, with a reasonable expectation of success. Prelim. Resp. 21–26. Petitioner generally describes how the two references could be combined to meet the claim limitations, but Petitioner does not explain why a person of ordinary skill in the art would have combined JPAP 216 and JPAP 237 “‘in the way the claimed invention does.’” Id. at 22 (citing ActiveVideo Networks, Inc. v. Verizon Communications, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012)). In particular, we are not persuaded that Petitioner has explained why a person of skill in the art would want to add an overhead hoist to the AMHS of JPAP 216. The AMHS of JPAP 216 utilizes the vertical motion of the storage carousel to move the pods, and there is no indication in JPAP 216, JPAP 237, or Petitioner’s analysis of why an overhead hoist would be necessary or beneficial to the functioning of an AMHS of the type disclosed in JPAP 216. Id. at 27–28. Although Petitioner consistently paraphrases the tests for obviousness set forth by the Supreme Court in KSR, we agree with Patent Owner that such paraphrasing cannot substitute for factual analysis and application of the particular facts and evidence of this case according to the analytical framework set out in KSR. Id. at 22.” slip op. at 15
- Expert testimonyPetitioner expert discountedDecided for patent owner
“vehicle that can move articles vertically to a processing station as stated by Petitioner. Prelim. Resp. 18–19. We agree with Patent Owner. In JPAP 216 Figure 1, vertical movement of the storage shelves is performed by the vertical carousel stocker. Id. at 19–20 (citing Ex. 1007, Fig. 3); Ex. 1007, ¶ 10, Fig. 1. Vertical movement of the ceiling vehicle is not necessary, or in any way indicated, to move the pods vertically from port 28 to work station 56 as argued by Petitioner. Id. at 19–20 (citing Ex. 1007, Fig. 3); Ex. 1007 ¶¶ 13, 15, 17–19. Petitioner’s reliance on paragraph 58 of Dr. Sturges’s Declaration (Pet. 22) is not persuasive, because it makes the conclusory statement that a person skilled in the art would have recognized that transfer device 38 “must have the capability to move . . . vertically to effect transfer of the article 40 to both port 28 and station 56,” without explaining why. Ex. 1028 ¶ 58. The quoted statement, moreover, appears to be at odds with the drawings and description of JPAP 216, as explained by Patent Owner. Prelim. Resp. 19–20. In the absence of any engineering and design analysis of the AMHS disclosed in JPAP 216 to support the quoted statement, we give it no weight.” slip op. at 13
§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,165,927 - Space Exploration Technologies Corp. v. Blue Origin LLCInstitution deniedPTAB · Mar 3, 2015 · IPR2014-01378 · APJ Carl M Defranco · IPR · Institution
The Board denied institution on claims 14 and 15 because the means-plus-function limitations were not amenable to construction, preventing assessment of the asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“of any application of the prior art is a proper construction of the claims at issue). Any comparison with the prior art asserted in the Petition would be speculative and futile. As such, our analysis begins and ends with the claims, and we are unable to determine whether there is a reasonable likelihood that SpaceX would prevail on the prior art ground asserted in the Petition against claims 14 and 15. That is because inter partes review is limited to grounds of anticipation and obviousness under 35 U.S.C. §§ 102 and 103, not indefiniteness under 35 U.S.C. § 112. See 35 U.S.C. 311(b), 37 C.F.R. § 42.104(b)(2). IV. CONCLUSION Because the challenged claims are not amenable to construction, we are unable to reach a determination on the reasonable likelihood of SpaceX prevailing on the prior art ground asserted in the Petition. V. ORDER For the foregoing reasons, it is ORDERED that the Petition is denied; and FURTHER ORDERED that no inter partes review will be instituted pursuant to 35 U.S.C. § 314(a) with respect to claims 14 and 15 of the ’321 patent on the ground of unpatentability asserted in the Petition.” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Other
“A patent must be precise enough to notify a skilled artisan of what is claimed and what is still open to the public. Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014) (citing Markman v. Westview Instruments, Inc., 517 U.S. 370, 373 (1996)). On the current record, we find that the ’321 patent does not describe any structure for performing the functions of “igniting,” “shutting off,” and “reigniting” the rocket engines as recited in claim 14. Absent meaningful disclosure of structure for the claimed “means,” the ’321 patent leaves skilled artisans to speculate about what is being claimed. In other words, the Specification’s lack of corresponding structure for the “means for igniting,” “means for shutting off,” and “means for reigniting” limitations prevents us from arriving at the proper scope for claim 14. A lack of sufficient disclosure of structure under 35 U.S.C. § 112, ¶ 6 renders a claim indefinite and, thus, not amenable to construction. See In re Aoyama, 656 F.3d 1293, 1298 (Fed. Cir. 2011) (quoting Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010) (“If a claim is indefinite, the claim, by definition, cannot be construed.”)). Because claim 14 lacks adequate structural support for some of the means-plus-function limitations, it is not amenable to construction. And without ascertaining the breadth of claim 14, we cannot undertake the necessary factual inquiry for evaluating obviousness with respect to differences between the claimed subject matter and the prior art. Aoyama, 656 F.3d at 1296 (the “first step”” slip op. at 8
- BurdenNot reached
“of any application of the prior art is a proper construction of the claims at issue). Any comparison with the prior art asserted in the Petition would be speculative and futile. As such, our analysis begins and ends with the claims, and we are unable to determine whether there is a reasonable likelihood that SpaceX would prevail on the prior art ground asserted in the Petition against claims 14 and 15. That is because inter partes review is limited to grounds of anticipation and obviousness under 35 U.S.C. §§ 102 and 103, not indefiniteness under 35 U.S.C. § 112. See 35 U.S.C. 311(b), 37 C.F.R. § 42.104(b)(2). IV. CONCLUSION Because the challenged claims are not amenable to construction, we are unable to reach a determination on the reasonable likelihood of SpaceX prevailing on the prior art ground asserted in the Petition.” slip op. at 9
Claim constructioncites Markman · NautilusPatents in suitUS 8,678,321
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.