- Favored Tech Corporation v. P2i LtdNo claims unpatentablePTAB · Aug 23, 2021 · IPR2020-00478 · APJ Jeffrey W Abraham · IPR · Final written decision
Favored Tech did not prove claims 1–17 unpatentable: Baalmann did not anticipate the asserted claims, and the obviousness grounds lacked adequate disclosure or motivation with a reasonable expectation of success.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionNo construction neededGranted
“After considering Petitioner’s arguments regarding claim 9, Patent Owner’s silence regarding claim 9, and the language in the ’070 patent itself (e.g., Ex. 1001, 11:45–52, 12:60–61), we agree with Petitioner that the term “1H, 1H, 2H, 3H-heptadecafluorodecylacylate” in claim 9 should be construed to correctly recite HDFDA (1H, 1H, 2H, 2H-heptadecafluorodecylacrylate). The error Petitioner identifies is conspicuous and undisputed, and the intrinsic record does not suggest a different interpretation. Fitbit, Inc. v. Valencell, Inc., 964 F.3d 1112, 1119–20 (Fed. Cir. 2020); Novo Industries, L.P. v. Micro Molds Corp., 350 F.3d 1348, 1357 (Fed. Cir. 2003). Additionally, after reviewing the parties’ remaining claim construction arguments and evidence, we determine that we do not need to expressly construe any other terms for purposes of this Decision because, as addressed in detail below, we find Petitioner’s showings deficient for reasons that do not depend on the construction of any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art in the field of the ’070 patent would have had “at least a bachelor’s degree in a field such as chemistry, physics, or chemical engineering, as well as at least two years of experience with plasma-polymerization techniques.” Pet. 14 (citing Ex. 1002 ¶¶ 26–31). Patent Owner agrees with this proposed definition “with the understanding that ‘experience with plasma-polymerization techniques’ includes plasma-enhanced chemical vapor deposition (PECVD) techniques.” PO Resp. 9 (citing Ex. 2010 ¶ 20; Ex. 1002 ¶¶ 12, 63). In light of the record before us, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art. As Patent Owner points out, Dr. Gleason states that PECVD is a form of plasma polymerization, and thus the parties agree that experience with plasma-polymerization techniques would include PECVD. PO Resp. 9; Ex. 1002 ¶ 63. The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner. Petitioner has failed to demonstrate adequately that each and every element in claim 1, arranged as recited in the claim, is found in a single prior art reference. NetMoneyIN, 545 F.3d at 1369; Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Here, Petitioner combines several different teachings from Baalmann to support its anticipation argument. For example, Petitioner relies on the “evacuable chamber with a volume of 1 m3” from Baalmann’s Example 1, but not the power (2kW) expressly disclosed as being used with that reactor of Example 1. Ex. 1004 ¶ 47. With regard to power density, Petitioner relies on Baalmann’s general disclosure that “[t]he electrical power input per chamber volume is set between 0.5 kilowatt/m3 and 5 kilowatt/m3.” Ex. 1004 ¶ 20. As Patent Owner points out, however, that power density range is not tied to any particular reactor volume or plasma zone volume. PO Resp. 19. Baalmann also fails to expressly disclose the plasma zone volume of the reactor in Example 1. See Ex. 1004 ¶¶ 47–48. To attempt to overcome this absence of an express disclosure, Petitioner argues that, for the reactor used in Example 1, the plasma zone volume and reactor volume are the same based on the configuration of the electrodes in the reactor. Pet. 24–25. Baalmann, however, does not expressly disclose the electrode configuration of the reactor in Example 1. See Ex. 1004 ¶¶ 47–48. Instead, Petitioner relies on Baalmann’s general disclosure of an embodiment wherein one electrode is formed by the chamber wall itself. Pet. 24–25; Ex. 1004 ¶¶ 35, 61. In so doing, Petitioner ignores the fact that Baalmann also states that “[t]wo opposite rod-shaped electrodes may also be used.” Ex. 1004 ¶ 35. In view of this, we disagree with Petitioner’s conclusion that a person of ordinary skill in the art “would have understood that chamber to be configured as described throughout the rest of the specification: with the chamber wall serving as one of the electrodes.” Pet. 24. Even if we were persuaded by Petitioner’s argument, the fact remains that Petitioner’s anticipation challenge is based on the combination of different features disclosed in separate portions of Baalmann. “Such picking and choosing . . . has no place in the making of a 102, anticipation rejection.” In re Arkley, 455 F.2d 586, 587–88 (CCPA 1972) (cited with approval in Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1083 (Fed. Cir. 2008)); see also Microsoft Corp. v. Biscotti, Inc., 878 F.3d 1052, 1069 (Fed. Cir. 2017) (stating that anticipation is not proven by multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“For all of the foregoing reasons, we are not persuaded by Petitioner’s argument that a person of ordinary skill in the art would have inferred the volume of the plasma zone10 in Coulson is 470 cm3 based on Coulson’s disclosure of a “glow discharge reactor” having a volume of 470 cm3. Pet. 38; Reply 15–16. In view of this, we are likewise not persuaded that Coulson discloses a power density of 85.1 W/m3, because Petitioner’s 9 Dr. Gleason confirmed that she did not perform any experiments to verify her opinions regarding Coulson’s plasma zone. Ex. 2017, 80:10–18. 10 As noted above, Petitioner presented its argument in the context of its proposed construction of plasma zone. Petitioner did not present an alternative argument supported by sufficient evidence addressing the volume of Coulson’s plasma zone based on Patent Owner’s proposed construction of plasma zone. Accordingly, we agree with Patent Owner’s assertion that we do not need to expressly construe the term plasma zone to resolve this issue. Sur-reply 1. argument that Coulson discloses this power density is based on its assertion that Coulson has a plasma zone volume of 470 cm3. Pet. 38. This finding is fatal to Petitioner’s obviousness challenge of claim 1 based on the combined teachings of Baalmann and Coulson because Coulson’s purported disclosure of using a power density of 85.1 W/m3 is an essential component of Petitioner’s obviousness challenge. An obviousness determination requires finding both “that a skilled artisan would have been motivated to combine the teachings of the prior art . . . and that the skilled artisan would have had a reasonable expectation of success in doing so.” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367-68 (Fed. Cir. 2016). In attempting to establish a person of ordinary skill in the art would have had reason to combine the teachings of Baalmann and Coulson, and would have had a reasonable expectation of success in doing so, Petitioner repeatedly refers to using Coulson’s optimized reaction conditions, including power density, in Baalmann’s larger reactor. Pet. 48 (stating that a person of ordinary skill in the art “would have been motivated to maintain the same or similar reaction conditions within a larger reaction chamber that were present in Coulson’s chamber during Coulson’s reported plasma polymerization reactions, including power density and pressure, to preserve the same effective results.”), 48–49 (“That would have included motivation to maintain Coulson’s disclosed power density when scaling up to a larger reaction volume to preserve the beneficial results Coulson reported at that optimized power density.”); Reply 23 (referring to the “straightforward, compelling obviousness case set forth in the petition” that a person of ordinary skill in the art “would have expected to succeed performing Coulson’s reactions on a larger scale in view of Baalmann”); 23 (“The petition explained why a POSA would have modified Baalmann to use Coulson’s HDFDA monomer and reaction conditions to produce coatings with a reasonable expectation of success” ), 24 (stating the Petition “explained why a POSA would have expected success using known parameters from Coulson in an established large-scale apparatus”). During the oral hearing, counsel for Petitioner confirmed its obviousness positions depend on using Coulson’s power density. Tr. 20:10–21:16. Accordingly, Petitioner’s failure to demonstrate adequately that Coulson discloses or suggests a power density of 85.1 W/m3 undermines its reason to combine and reasonable expectation of success arguments. Petitioner’s argument that Baalmann discloses the claimed power” slip op. at 26
Patent outcomesUS 8,389,070 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,389,070 - Elekta, Inc. v. Varian Medical Systems, Inc.No claims unpatentablePTAB · Jun 5, 2017 · IPR2016-00380 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1, 2, and 4–9 were not shown unpatentable under either § 103 ground; claims 13 and 18 were canceled after Patent Owner’s motion to amend was granted.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“Although a claim term that does not include the word “means” is presumed not to invoke a means-plus-function analysis, that presumption may be overcome if the limitation does not “recite sufficiently definite structure” or recites a “function without reciting sufficient structure for performing that function.” Williamson v. Citrix Online, LLC, 792 F.3d 2 Section 4(c) of the Leahy-Smith America Invents Act (“AIA”) redesignated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Pub. L. No. 112- 29, 125 Stat. 284, 296 (2011). Because the ’703 patent has a filing date before September 16, 2012 (effective date of § 4(c)), we refer to the pre-AIA version of § 112. 1339, 1349 (Fed. Cir. 2015). Petitioner’s expert, Russell J. Hamilton, Ph.D., testifies that “the term ‘logic’ would not be recognized by one of ordinary skill in the art as providing sufficiently definite structure for performing the claimed functions,” and that “[l]ogic can be implemented in software, in hardware, and in combinations of hardware and software.” Ex. 1021 ¶ 122. The parties provide sufficient reasoning to overcome the presumption against a means-plus-function construction, and we accordingly construe “first logic” and “second logic” in accordance with 35 U.S.C. § 112 ¶ 6.” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed patent owner constructionDecided for patent owner
“untenable because its broad identification only of “computer software and/or computer hardware” as structure for performing the recited function is too generic. The law regarding construction of means-plus-function limitations as applied to computer-implemented elements is well-established: For computer-implemented means-plus-function claims where the disclosed structure is a computer programmed to implement an algorithm, “the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.” . . . This court permits a patentee to express that algorithm in any understandable terms including as a mathematical formula, in prose, . . . , or as a flow chart, or in any other manner that provides sufficient structure. Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (citations omitted). Patent Owner’s proposed construction is superior because it identifies the algorithm through explicit reference to the flow chart of Figure 4 and related disclosure in the Specification. Patent Owner’s position is supported by testimony of its expert, Sasa Mutic, Ph.D., who refers to those disclosures in opining that “the [’703] patent describes a process of steps for obtaining the result of properly positioning a patient to begin a treatment” and that “Fig. 4 of the [’703] patent provides a flowchart of a process for use of an embodiment of the invention.” Ex. 2012 ¶ 69. Petitioner takes the position that the ultimate scope of the corresponding algorithm “does not matter” because Petitioner contends that the challenged claims are unpatentable even under Patent Owner’s proposed construction. Pet. Reply 315, 3. Nevertheless, Petitioner attacks Patent Owner’s proposed construction as “implicitly adopt[ing]” two “additional but unreasonable limitations.” Id. First, Petitioner contends that “the claims do not require the performance of the function of the second logic to be fully automated and instead permit human interaction with the second logic.” Id. Second, Petitioner contends that blocks 520 (“Position Patient”), 525 (“Register Treatment Image Data with Simulator/Reference Image Data and Reposition Patient”), and 530 (“Position Clinical Treatment Machine”) of Figure 4 “need not be performed in their entirety by logic so long as the second logic is used for some step in each block.” Id. at 4. We find no inconsistency in these positions with Patent Owner’s proposed construction. In light of the foregoing considerations, we adopt Patent Owner’s proposed construction.” slip op. at 14
- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner
“Petitioner contends that the claims canceled in IPR2016-00341 “were directed to methods that recited the function performed by the second logic,” and that “Patent Owner is now estopped from arguing the subject matter of the same scope is patentable.” Pet. Reply 315, 1. Petitioner cites no authority to support this position, which improperly focuses on only one limitation of the claims, divorced from the claims’ other limitations. We reject Petitioner’s contention because the method claims canceled in IPR2016-00341 do not constitute “subject matter of the same scope” as the apparatus claims challenged in these proceedings.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“skill in the art relevant to the ’703 patent “would be a person with a graduate degree (MS or PhD) in medical physics or a related field (e.g. Physics, Engineering) and three years of experience in radiation oncology beyond the completion date of their degree.” Ex. 1021 ¶ 17. Patent Owner’s expert, Dr. Mutic, expresses a level of ordinary skill that is generally similar to Petitioner’s expert, but accounts for the possibility of a medical education instead of a medical-physics education: [A] person of ordinary skill in the art . . . would be a medical physicist with a Ph.D. (or similar advanced degree) in physics, medical physics, or a related field, and two or more years of experience in radiation oncology physics and image processing/computer programming related to radiation oncology applications. Alternatively, one of ordinary skill in the art might have an M.D. degree in the same relevant fields and two or more years of practical experience with image processing and the use of computer systems that is related to medical applications. Ex. 2012 ¶ 36. The similarity in the experts’ opinions is reinforced by Dr. Mutic’s assertion that he has “considered Dr. Hamilton’s definition of the level of ordinary skill in the art and determined that it does not differ from [his] own expressions of this concept in any way that is relevant to the opinions” he expresses in his Declaration. Id. ¶ 38. Based on the expert testimony in the record, we agree with and adopt the level of skill expressed by Dr. Hamilton.” slip op. at 17
Patent outcomesUS 8,867,703 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,867,703 - Elekta, Inc. v. Varian Medical Systems, Inc.No claims unpatentablePTAB · Jun 5, 2017 · IPR2016-00315 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1, 2, and 4–9 were not shown unpatentable under either §103 ground because the references did not disclose the claimed second logic; claims 13 and 18 were canceled by motion.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“Although a claim term that does not include the word “means” is presumed not to invoke a means-plus-function analysis, that presumption may be overcome if the limitation does not “recite sufficiently definite structure” or recites a “function without reciting sufficient structure for performing that function.” Williamson v. Citrix Online, LLC, 792 F.3d 2 Section 4(c) of the Leahy-Smith America Invents Act (“AIA”) redesignated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Pub. L. No. 112- 29, 125 Stat. 284, 296 (2011). Because the ’703 patent has a filing date before September 16, 2012 (effective date of § 4(c)), we refer to the pre-AIA version of § 112. 1339, 1349 (Fed. Cir. 2015). Petitioner’s expert, Russell J. Hamilton, Ph.D., testifies that “the term ‘logic’ would not be recognized by one of ordinary skill in the art as providing sufficiently definite structure for performing the claimed functions,” and that “[l]ogic can be implemented in software, in hardware, and in combinations of hardware and software.” Ex. 1021 ¶ 122. The parties provide sufficient reasoning to overcome the presumption against a means-plus-function construction, and we accordingly construe “first logic” and “second logic” in accordance with 35 U.S.C. § 112 ¶ 6.” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed patent owner constructionDecided for patent owner
“untenable because its broad identification only of “computer software and/or computer hardware” as structure for performing the recited function is too generic. The law regarding construction of means-plus-function limitations as applied to computer-implemented elements is well-established: For computer-implemented means-plus-function claims where the disclosed structure is a computer programmed to implement an algorithm, “the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.” . . . This court permits a patentee to express that algorithm in any understandable terms including as a mathematical formula, in prose, . . . , or as a flow chart, or in any other manner that provides sufficient structure. Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (citations omitted). Patent Owner’s proposed construction is superior because it identifies the algorithm through explicit reference to the flow chart of Figure 4 and related disclosure in the Specification. Patent Owner’s position is supported by testimony of its expert, Sasa Mutic, Ph.D., who refers to those disclosures in opining that “the [’703] patent describes a process of steps for obtaining the result of properly positioning a patient to begin a treatment” and that “Fig. 4 of the [’703] patent provides a flowchart of a process for use of an embodiment of the invention.” Ex. 2012 ¶ 69.” slip op. at 14
- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner
“Petitioner contends that the claims canceled in IPR2016-00341 “were directed to methods that recited the function performed by the second logic,” and that “Patent Owner is now estopped from arguing the subject matter of the same scope is patentable.” Pet. Reply 315, 1. Petitioner cites no authority to support this position, which improperly focuses on only one limitation of the claims, divorced from the claims’ other limitations. We reject Petitioner’s contention because the method claims canceled in IPR2016-00341 do not constitute “subject matter of the same scope” as the apparatus claims challenged in these proceedings.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“skill in the art relevant to the ’703 patent “would be a person with a graduate degree (MS or PhD) in medical physics or a related field (e.g. Physics, Engineering) and three years of experience in radiation oncology beyond the completion date of their degree.” Ex. 1021 ¶ 17. Patent Owner’s expert, Dr. Mutic, expresses a level of ordinary skill that is generally similar to Petitioner’s expert, but accounts for the possibility of a medical education instead of a medical-physics education: [A] person of ordinary skill in the art . . . would be a medical physicist with a Ph.D. (or similar advanced degree) in physics, medical physics, or a related field, and two or more years of experience in radiation oncology physics and image processing/computer programming related to radiation oncology applications. Alternatively, one of ordinary skill in the art might have an M.D. degree in the same relevant fields and two or more years of practical experience with image processing and the use of computer systems that is related to medical applications. Ex. 2012 ¶ 36. The similarity in the experts’ opinions is reinforced by Dr. Mutic’s assertion that he has “considered Dr. Hamilton’s definition of the level of ordinary skill in the art and determined that it does not differ from [his] own expressions of this concept in any way that is relevant to the opinions” he expresses in his Declaration. Id. ¶ 38. Based on the expert testimony in the record, we agree with and adopt the level of skill expressed by Dr. Hamilton.” slip op. at 17
Patent outcomesUS 8,867,703 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,867,703
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.