- Resmed Corp. v. Cleveland Medical Devices, Inc.No claims unpatentablePTAB · Jun 29, 2026 · IPR2025-00247 · APJ Cynthia M Hardman · IPR · Final written decision
Claims 1–19 were not shown unpatentable under any of six obviousness grounds because Truitt did not teach or suggest the claimed severity calculation and index, and the Mumford combinations lacked the required sensor disclosures.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Patent Owner filed an authorized Motion to Terminate, alleging that Petitioner failed to name its corporate parent, Resmed Inc., as a real party in interest. Paper 29. Petitioner filed an opposition. Paper 31. Patent Owner filed a reply. Paper 32. We denied the Motion to Terminate. Paper 40.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“disorder symptoms” require a “quantitative” calculation or use of an algorithm, we also disagree. See PO Resp. 14–16. First, nothing in the language of the claims themselves describes or requires a “quantitative” calculation or an algorithm. See generally Ex. 1001, 23:6–26:59. To be sure, the ’029 patent discloses embodiments that use known algorithms to “quantify the level of severity of the subject’s sleeping disorder or symptoms.” See, e.g., id. at 20:16–19. But the Specification does not require an algorithm. The Specification also indicates that quantification is merely “preferable” (i.e., not required), and is merely one embodiment. See, e.g., id. at 19:8–12 (“The signals from the one or more sensors used in various embodiments of the present invention are preferably analyzed using a processor and software that can quantitatively estimate or determine the severity of the subject’s sleeping disorder or symptoms.”) (emphasis added), 4:51–59 (“Finally, in still another embodiment, the present invention includes a sleeping disorder treatment system comprising a device for diagnosing and creating a quantitative output of a level of severity of a subject’s sleeping disorder or symptoms . . . .”) (emphasis added); see also Reply 5–6 (citing Ex. 1001, 4:3–59 and 19:8–12 and stating that the ’029 patent lists “numerous embodiments where only one of seven include a quantitative assessment”). Elsewhere, the Specification more generally states that signals from sensors are “analyzed to determine the level of severity of the symptoms,” without specifying that such analysis must be “quantitative” or performed by an algorithm. See Ex. 1001, 3:41–44. In view of these disclosures, Patent Owner does not persuade us to adopt its narrowing claim construction. Indeed, our reviewing court has “repeatedly warned against confining the claims” to specific embodiments disclosed in the Specification. Phillips, 415 F.3d at 1323. Patent Owner’s reliance on a prior Board decision in PGR2024- 00012, which related to the parent of the ’029 patent, is unavailing. See PO Resp. 15–16. We agree with Petitioner that in the cited case, “[t]he Board made no findings about the meaning of the term calculating ‘the data of a severity of the sleep disorder symptoms of the subject’ for claim construction.” Reply 8. Indeed, neither party offered any claim construction, and the Board determined that no claim construction was necessary for purposes of that decision. See ResMed Corp., PGR2024- 00012, Paper 7 at 8. The page of the decision Patent Owner cites addresses written description support in the specification for the claims challenged in that PGR, not claim construction. See id. at 16. In any event, the cited decision is a decision on institution. The Board’s statements there are, by nature, preliminary findings and conclusions based on a preliminary record, and are not binding here. For at least the above reasons, Patent Owner does not persuade us to adopt its narrowing claim construction and we find that the term “data of a severity” does not need construction because the words of the term are clear on their face.” slip op. at 31
- Strike new argumentNew argument disregardedDecided for patent owner
“skilled artisan would have incorporated only portions of Mumford’s algorithm into Truitt’s PAP (i.e., only those portions related to “the detection of sleep disordered events” and not the portions of the algorithm related to “determin[ing] sleep stage”) comes too late because this argument was not in the Petition. See, e.g., Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1286–87 (Fed. Cir. 2017) (rejecting petitioner’s “attempts to cure the petition’s deficiencies in its subsequent briefing to the Board”). The Petition does not discuss modifying Mumford’s sleep efficacy algorithm before incorporating it into Truitt’s PAP device or incorporating only certain features of the algorithm. Indeed, the Petition and Dr. Kirkness rely on Mumford’s ability to detect sleep arousals when mapping Mumford to the claimed “data of a severity” and “index.” See Pet. 69–70; Ex. 1003 (Kirkness Decl.) ¶¶ 323–325. Mumford discloses that the mask electrodes detect arousals. See Ex. 1009 (Mumford) 2:4–10, 11:39–48. The same lack of disclosure plagues Petitioner’s belated Reply argument that Truitt’s ports 74 and 76 can incorporate electric sensing elements that would have functioned similar to Mumford’s electrodes. See Reply 22. The Petition did not mention ports 74 and 76 or otherwise suggest that a skilled artisan would have added functionality similar to Mumford’s electrodes to Truitt’s PAP, and we find that it is too late on Reply for Petitioner to posit this modification.” slip op. at 40
- Expert testimonyPetitioner expert creditedPatent owner expert creditedMixed
“significant than the intrinsic record in determining ‘the legally operative meaning of claim language.’” Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005). This is especially applicable to Dr. Jafari’s opinions. His declaration was not prepared for this proceeding and thus Dr. Jafari was not subject to cross examination in this proceeding. See Reply 6 n.3. Moreover, Dr. Jafari was not opining on claim construction; rather, he was addressing the alleged indefiniteness. See Ex. 2020 (Jafari Decl.) 12 (heading addressing definiteness), ¶¶ 41–42, 46. Additionally, paragraphs 41–42 of Dr. Jafari’s declaration discuss claim terms phrases in a different patent (US 11,375,921), which explicitly include the terms “quantified” and “quantitative.” See Reply 6–7; Ex. 2020 (Jafari Decl.) ¶ 34. For at least these reasons, Patent Owner has not persuaded us that Dr. Jafari’s testimony is applicable here. Further, regarding the portion of Patent Owner’s proposed construction reciting “the degree of deviation from the baseline characteristics of a patient without sleep disorder symptoms,” Dr. Borkholder does not do his own analysis, but instead simply states that he “agree[s] with the litigation claim construction opinions of Dr. Jafari.” Ex. 2019 (Borkholder Decl.) ¶ 53. This is insufficient, and thus we do not credit Dr. Borkholder’s testimony regarding claim construction. We instead credit Dr. Kirkness’s statement that “[s]everity data is frequently calculated as the deviation from baseline characteristics of the patient himself, not a generic person ‘without sleep disorder symptoms.’” Ex. 1071 (Kirkness Reply Decl.) ¶ 13; Reply 9. As Dr. Kirkness explains, and Patent Owner does not dispute (see generally Sur-reply), “[t]he ‘baseline characteristics of a [generic] patient without sleep disorder symptoms’ would be irrelevant to any particular patient with their own unique breathing patterns and sleep disorder symptoms.” Ex. 1071 (Kirkness Reply Decl.) ¶ 13 (second alteration in original). For at least these reasons, we reject Patent Owner’s proposed claim construction.” slip op. at 30
Patent outcomesUS 11,872,029 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,872,029 - Prime Time Toys LLC / Prime Time Toys Ltd. et al. v. Spin Master, Inc.No claims unpatentablePTAB · Oct 10, 2025 · IPR2023-01461 · APJ Hyun J Jung · IPR · Final written decision
Claims 1, 2, 13, and 15–20 were not shown unpatentable because Petitioner failed to establish a sufficient motivation to combine Peev and Spitballs, including with Moorhouse.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties do not address the adopted level of ordinary skill in the art. See PO Resp.; Pet. Reply; PO Sur-reply. Based on the full record, we maintain and affirm that one of ordinary skill in the art would have had: a bachelor’s degree in mechanical engineering, industrial design, or equivalent, with at least one year of relevant experience designing projectile launching systems but would also be a member of a team, which would include a person with a chemical engineering), or has at least one year experience working with materials for use in consumer products and that “equivalent work experience may substitute for educational experience, and vice versa.” Pet. 21–22 (quoting Ex. 1015, 7–8); see also Ex. 1016 ¶ 55 (stating that “Patent Owner’s and Petitioner’s definitions of the [person of ordinary skill in the art] are similar, and my opinions in this Declaration would not change if I used Patent Owner’s definition of the [person of ordinary skill in the art] rather than Petitioner’s definition”). We find that the proposed level of ordinary skill in the art is consistent with the ’255 patent and the asserted prior art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner nor Patent Owner proposes any interpretation for any claim term. Pet. 23; see PO Resp. Petitioner notes that the ALJ in the ITC proceeding construed two terms used in the ’282 and ’683 patents, specifically “super absorbent polymer” and “a firing mechanism that directly applies a force to the ammunition.” Pet. 23 (citing Ex. 1015, 12, 14). Based on the full record, we determine that no term requires express construction to resolve the parties’ dispute. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
- Expert testimonyPetitioner expert discountedMixed
“we give little weight to the opinion of Dr. Courtney on whether Spitballs would have been considered liquid filled by one of ordinary skill in the art. Pet. Reply 15–16; PO Sur-reply 18; Ex. 1037 ¶ 55; Ex. 2121, 61:12–13; see also PO Sur-reply 14–15 (arguing that Dr. Courtney does not meet the adopted level of ordinary skill in the art). We agree with Patent Owner that Petitioner’s list of “rubber, cork, foam, and soft plastics, such as SAPs” “does not exclude all of the other types of materials Petitioner failed to address—e.g., the gelatin materials used to make paintballs.” PO Resp. 24 (citing Ex. 2117, 1). The “openended” list “has no meaningful evidentiary support” because the cited paragraphs from its declaration “make no reference at all to potential airsoft ammunition.” Pet. 38; PO Resp. 24; Ex. 1016 ¶ 77; Ex. 1017 ¶¶ 36–39, 46– 48. Petitioner’s declarant Dr. Reitman also “acknowledged that airsoft considerations are beyond the scope of her testimony.” Ex. 2030, 117:17– 118:20. We agree with Patent Owner that Petitioner’s list would include “countless distinct polymers.” PO Resp. 25; Ex. 2120, 27–28.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“In other words, Petitioner does not squarely address the testimonial evidence that the softness of Spitballs would not have been equated with safety, because of its higher weight and kinetic energy. Ex. 2015 ¶¶ 44–55. We agree with Patent Owner that Petitioner does not assert fragmentation and deformation would have overcome the greater kinetic energy of the heavier Spitballs, and that Petitioner’s declarant admitted such calculation was not done. PO Sur-reply 7 (citing Ex. 2121, 48:11–49:7); Ex. 2121, 48:11–49:7 (Petitioner’s declarant testifying that calculations of how much kinetic energy is absorbed when Spitballs bounce or explode were not done). Petitioner’s declarant also identified that back splatter can create an additional safety concern. Ex. 2121, 101:14–104:4. We agree with Patent Owner that Petitioner failed to discuss the deformation and fragmentation of Spitballs in its Petition and declarations. PO Sur-reply 6 (citing Pet. Reply 10–11; Ex. 1037 ¶ 43). We also agree that Petitioner did not explain how one of ordinary skill in the art could have reliably assessed the safety of Spitballs and airsoft rounds. Id.; see also Ex. 2121, 47:1–48:10 (Petitioner’s declarant testifying that experimentation would be the best way to quantify how much kinetic energy is absorbed through deformation and fragmentation of a given projectile). focused on the mass and diameter calculations provided by Petitioner’s declarant, and Petitioner has the burden to analyze a projectile other than the one disclosed in Spitballs, not Patent Owner. PO Sur-reply 10–11 (citing Pet. Reply 13; Ex. 1017 ¶ 67; Ex. 2015 ¶ 59). Petitioner failed to do such an analysis of a 6mm Spitball or SAP projectile. Regarding Petitioner’s reliance on deposition testimony from the ITC proceedings, as argued by Patent Owner, its declarant agreed that making ammunition softer would make injury less likely, if all other parameters were equal, not larger and heavier like a substitution with Spitballs. PO Resp. 16–17 (citing Pet. 37; Ex. 1004, 531:25–532:9; Ex. 2015 ¶¶ 60–61); Ex. 1017 ¶ 67 (Petitioner’s declarant opining that Spitballs can “grow up to 200 times their original size” to reach a mass of 1.844g); Ex. 1037 ¶ 39 (Petitioner’s declarant agreeing that “when all other variables are held constant, heavier is less safe, meaning injury potential is increased”); Ex. 2015 ¶¶ 54–59 (Patent Owner’s declarant opining that heavier and softer ammunition can pose more injury risk); Ex. 2016, 11 (indicating that airsoft ammunition typically comes in weights from 0.12g to 0.25g). We, thus, agree with Patent Owner that Petitioner fails to prove that” slip op. at 16
Patent outcomesUS 8,596,255 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,596,255 - Simpson Strong-Tie Company Inc. v. Columbia Insurance CompanySome claims unpatentablePTAB · Feb 28, 2025 · PGR2023-00047 · APJ Stephen E Belisle · PGR · Final written decision
Claims 1–37, 39–90, and 92–105 are unpatentable as obvious; claims 38 and 91 were not shown unpatentable because the cited art did not teach flanges physically touching along a juncture.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues that the outcome of these cases would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’626 patent, the background technical field, the prior art, and Petitioner’s proposed and undisputed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Mr. Fennell (Ex. 1003 ¶¶ 12–15).” slip op. at 20
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“But Patent Owner then urges us to narrow the meaning of “portion” itself such that “channel-shaped portion” requires “all portions of the hanger which directly bound the channel that receives the structural component.” PO Resp. 19 (emphases added). Patent Owner argues the Specification makes this “clear.” Id. (citing Ex. 1001, 2:28–31). Contrary to Patent Owner’s arguments (PO Resp. 19), we find no support in claim 1 to further narrow the interpretation of “portion” in “channel-shaped portion” to mean every portion of the hanger which directly bounds the channel that receives the structural component. See Ex. 1001, 12:14–36 (claim 1). We, like Petitioner, similarly find no support in the Specification or limited prosecution history (see Pet. 5–6), and Patent Owner does not direct us to any, showing that the inventor acted as its own lexicographer or disavowed any claim scope to allot this narrowed interpretation to the subject limitation. See Pet. Reply 3 (“Nowhere does the ’626 patent specification describe that all portions of the hanger directly bounding channel 52 constitute the channel-shaped portion.” (citing Ex. 1046 ¶¶ 16–18; Ex. 1001, 4:39–47)); PO Resp. 19. Further, as argued by Petitioner (Pet. Reply 4–5), Patent Owner’s proposed construction limiting “portion” to “all portions” of the hanger that “directly bound the channel that receives the structural component” could cause the “channel-shaped portion” on the same physical hanger to change depending on which type of structural component an installer were to choose to use in construction: Patent Owner’s claim construction improperly focuses on the wall assembly intended to be used with the recited hanger. The claims, however, are directed to a hanger, not a wall assembly. When assessing what part of a hanger constitutes a “channel-shaped portion” and an “extension portion,” [the skilled artisan] would consider the physical features of the hanger itself and the natural divisions between those features. [The skilled artisan] would not assess the claim language and its application to the prior art by speculating how an installer might later install the hanger with a joist or an entire wall assembly, which may differ from installation to installation. Pet. Reply 4 (citing Ex. 1046 ¶ 19). We find this defect further supports a broader interpretation of “channel-shaped portion” as discussed above. Accordingly, based on the complete record before us, we determine” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner argues, inter alia, that Yamaguchi teaches a joist hanger with an extension portion defining a space between its back flange and channel-shaped portion, and Bundy teaches to size a space created by an extension portion of its joist hanger to receive two layers of ⅝-inch-thick drywall between its back flange plane and channel-shaped portion. Pet. 16–18 (citing 1003 ¶¶ 75–78; Ex. 1007, 5:16–18, Fig. 1; Ex. 1041 (“Perspective View”; “Usage View”)); see id. at 17–18 (discussing “advantages” of two layers of 5/8" drywall as “fire resistance in a fire separation wall”). Petitioner argues the skilled artisan “would have been motivated to receive drywall between Yamaguchi’s back flange and channel-shaped portion to provide a shielded fire resistant wooden frame wall.” Pet. 18 (citing Ex. 1003 ¶¶ 78–79; Ex. 1007, 2:10–24); see id. ([“The skilled artisan] would have optimized the size of the spacing between Yamaguchi’s back flange and channel-shaped portion to accommodate two layers of 5/8”-thick-drywall according to the size preference described by Bundy for optimal fire protection and wall integrity.” (citing Ex. 1003 ¶ 80; Ex. 1007, 5:10–22)). Petitioner concludes: This modification to Yamaguchi would have been nothing more than applying a known technique (Bundy’s spacing a hanger seat from a wall frame by distance sufficient to accommodate two 5/8”-thick-drywall sheets for fire resistance) to a similar device (Yamaguchi’s hanger having a spacing of indeterminate length) to obtain the predictable result of a firewall hanger having a space between its channel-shaped portion and a wall frame large enough for receiving drywall therebetween, thereby “protect[ing] the structural members of a building.” Pet. 18 (citing Ex. 1007, 5:18–20; Ex. 1003 ¶ 80). Petitioner argues the skilled artisan would have had a reasonable expectation of success in modifying Yamaguchi as discussed above, “because doing so would still allow Yamaguchi’s hanger to perform its intended function of securing a joist to a wall.” Pet. 18 (citing Ex. 1041, 1; Ex. 1003 ¶ 81). Petitioner argues, “[r]ecognizing that Yamaguchi’s and Bundy’s hangers are constructed from sheet metal,” the skilled artisan “would have understood how to modify the size of Yamaguchi’s extension portions to accommodate two layers of 5/8”-thick-drywall while still allowing Yamaguchi’s hanger to secure a joist’s end to a frame wall.” Pet. 18–19 (citing Ex. 1003 ¶¶ 81–83; Ex. 1007, 4:47–51); see id. at 19–20 (discussing that although “Yamaguchi’s described setting is a sill plate,” the skilled artisan “would have been motivated to use Yamaguchi’s hanger on a wood frame wall in particular so that sheathing could be installed in the space behind the joist as taught by Bundy” (citing Ex. 1003 ¶¶ 81–82)). Based on the foregoing and the complete record before us, we find” slip op. at 46
- Expert testimonyPetitioner expert creditedDecided for petitioner
“artisan would have interpreted or understood the teachings of Yamaguchi and Bundy, as well as of the combination of those references, are unsupported attorney-arguments. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”). Patent Owner cites no evidence of how the skilled artisan would have understood the combined teachings of Yamaguchi and Bundy, or how such an understanding would support Patent Owner’s attorney arguments. Indeed, Patent Owner did not file any expert testimony in any of the three subject cases, despite that we must resolve the legal question of obviousness on the basis of underlying factual determinations, particularly the scope and content of the prior art and any differences between the claimed subject matter and the prior art from the vantage point of the skilled artisan. Graham, 383 U.S. at 17–18; see Pet. Reply 2 (“As a threshold matter, the Board’s findings in its Institution Decision should be carried forward to its final written decision because Patent Owner did not submit an expert declaration in support of its arguments.”); but see PO Sur-reply 1–4 (“[T]here is no requirement that a party rely exclusively on expert testimony in Post Grant Review proceedings or that attorney argument must be disregarded.”). To the contrary, Petitioner’s expert, Mr. Fennell, persuasively testifies in detail how and why the skilled artisan would have combined the teachings and suggestions of Yamaguchi and Bundy to achieve the invention of claim 1, including the features of limitation 1.3.B. See, e.g., Ex. 1003 ¶¶ 73–83, 96; Ex. 1046 ¶¶ 30–40. We find Mr. Fennell’s testimony credible (and uncontroverted).” slip op. at 40
Patent outcomesUS 11,649,626 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,649,626 - Lifecore Fitness, LLC D/B/A Assault Fitness v. Woodway USA, Inc.Some claims unpatentablePTAB · Oct 24, 2024 · IPR2023-00849 · APJ Amee A Shah · IPR · Final written decision
Claims 1, 4, 7–12, 14, 17, and 21–25 are unpatentable as obvious; claims 18, 20, 26, and 27 were not shown unpatentable.
RulingsFinal written decision- Prior constructionPrior construction adoptedOther
“1. “safety device” For the ’745 patent, the District Court construed “safety device” as “a” slip op. at 20
- Skill levelOther
“B. LEVEL OF ORDINARY SKILL IN THE ART In determining the level of ordinary skill in the art, various non-” slip op. at 17
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusNot shown unpatentable
“5. Objective Indicia of Nonobviousness a) Legal Standards Objective evidence of non-obviousness “may often be the most probative and cogent evidence in the record” and “may often establish that an invention appearing to have been obvious in light of the prior art was not.” Transocean, 699 F.3d at 1349. Thus, notwithstanding what the teachings of the prior art would have suggested to one skilled in the art, objective evidence of nonobviousness (or “secondary considerations”) may lead to a conclusion that the challenged claims would not have been obvious. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). Thus, our obviousness analysis includes consideration and weighing of Patent Owner’s indicia of nonobviousness.” slip op. at 72
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“cited by Petitioner, we find that on this record, Petitioner has demonstrated by a preponderance of evidence obviousness of claims 1, 4, 7–12, 14, 17, and 21–25 but has not demonstrated by a preponderance of evidence obviousness of claims 18 and 20 based on Socwell, Magid, and Sclater.” slip op. at 82
Patent outcomesUS 10,799,745 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,799,745 - Lifecore Fitness, LLC D/B/A Assault Fitness v. Woodway USA, Inc.Some claims unpatentablePTAB · Oct 22, 2024 · IPR2023-00843 · APJ Meredith C Petravick · IPR · Final written decision
Claims 30–34, 37–39, 41, 45–49, 57, and 59 are unpatentable under § 103 over Chickering, Magid, and Sclater; the remaining challenged claims were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“We do not adopt Patent Owner’s definition of the level of ordinary skill in the art because it is overly broad. During oral argument, Patent Owner clarified that its proposed level of ordinary skill includes a person with a mechanical engineering degree and no experience in the treadmill industry. See, e.g., Tr. 73:1–6. A POSA should have some knowledge related to treadmills as the ’884 patent and the prior art all relate to the field of treadmills. See generally Exs. 1001, 1009–1013; See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Both Petitioner and Patent Owner’s definitions encompass a person who has at least a degree in mechanical engineering degree. Pet. 5; PO Resp. 3–4. Petitioner’s definition additionally requires knowledge of exercise biomechanics, including anthropometry, and Patent Owner’s additionally requires knowledge of design, construction, testing, and operation of manual treadmills. Patent Owner argues that “any definition that requires a POSA to be a degreed engineer with ‘a demonstrated understanding of exercise biomechanics, including anthropometry’. . . — would necessarily exclude certain named inventions.” PO Sur-reply 2–3. We agree with Patent Owner that that experience and knowledge of treadmills is require, but the knowledge of exercise biomechanics is not. Ex. 2018 ¶ 70. Accordingly, we determine that a POSA would have a Bachelor’s of Science degree in mechanical engineering and at least one year of experience in the treadmill industry, including experience and knowledge of the design, construction, testing, and operation of manual treadmills overall.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1. “substantially prevent” The District Court construed “substantially prevent” as “restricts rotation to allow for only one rotational direction of movement.” Ex. 1033, 16. In this proceeding, we need not construe this claim term as there is no related dispute. 2. “safety device” For the ’884 patent, the District Court construed “safety device” as “a device that includes the elements recited [in the claims] and restricts rotation to allow for only one rotational direction of movement.” Ex. 1033, 23. Both parties indicate that we should adopt the District Court’s construction. PO Resp. 5; Pet. Reply 2. We, thus, construe “safety device” as “a device that includes the elements recited [in the claims] and restricts rotation to allow for only one rotational direction of movement We need not construe explicitly any other claim terms to reach our” slip op. at 13
- Prior constructionPrior construction adoptedDecided for patent owner
“2. “safety device” For the ’884 patent, the District Court construed “safety device” as “a device that includes the elements recited [in the claims] and restricts rotation to allow for only one rotational direction of movement.” Ex. 1033, 23. Both parties indicate that we should adopt the District Court’s construction. PO Resp. 5; Pet. Reply 2. We, thus, construe “safety device” as “a device that includes the elements recited [in the claims] and restricts rotation to allow for only one rotational direction of movement We need not construe explicitly any other claim terms to reach our” slip op. at 14
- Expert testimonyPatent owner expert discountedDecided for petitioner
“We find Patent Owner’s arguments and the testimony of Dr. Blair to be unpersuasive, because we do not agree that the claimed running surface is required to be a surface with which a runner’s feet are intended to make contact when using a treadmill. Dr. Blair testifies that “[a] POSA would understand a treadmill’s ‘running surface’ to be a surface that a runner’s feet would typically make contact when the user is running on the treadmill during normal use” and that, because a runner’s feet is not intended to contact the belt at the area where the forward rollers meet the rearward rollers, that area is not part of the running surface. Ex. 2018 ¶¶ 90–92. Dr. Blair’s testimony, however, contains no sufficient explanation to support his conclusion of what a POSA would understand by the term “running surface.” See id. ¶ 90. Further, Dr. Blair’s testimony is inconsistent with the language of claim 30. Claim 30 recites: “the running belt comprises a curved running surface.” Ex. 1001, 35:58–59. The language of claim 30 does not require the running belt’s running surface to only be portions that the runner typically or is intended to run upon. Dr. Blair’s testimony is also inconsistent with the ’884 patent which does not describe the running surface as being limited to the surface that a runner’s feet would typically make contact when the user is running on the treadmill during normal use. See generally id. The ’884 patent describes numerous examples of continuous running surfaces with a wide variety of” slip op. at 37
Patent outcomesUS 10,561,884 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,561,884 - ROKU, Inc. v. Universal Electronics, Inc.Some claims unpatentablePTAB · Nov 28, 2023 · IPR2022-00943 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–7, 9–13, 15, and 16 are unpatentable as obvious; claims 8 and 14 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that: On or before 7/12/2017, [one of ordinary skill in the art] would have had a bachelor’s degree in computer science, in electrical engineering, or a related field, and approximately three years of experience or equivalent study in voice-controlled devices in smart home systems. Additional graduate education could 2 Neither party presents arguments or evidence relating to such objective evidence of nonobviousness. in the field could substitute for formal education. Pet. 18. We adopted this definition for the purposes of the Decision on Institution. Dec. on Inst. 8–9. Patent Owner adopts Petitioner’s definition. PO Resp. 4. We again adopt Petitioner’s definition, which is consistent with the level of skill as reflected in the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Absent a recitation of order, or an order mandated by grammar or logic, the steps of a method claim are not construed to require a particular order. See, e.g., Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003). Patent Owner argues that the steps of claim 1, a method claim, must be performed in sequential order. PO Resp. 13–16. Without commenting on or conceding Patent Owner’s proposal, Petitioner contends that “the trial grounds meet this proposed construction.” Pet. Reply 24–25; Tr. 8:25–11:16. Our record does not reflect any indication that Patent Owner’s proposed construction requiring the sequential ordering of the method steps is not at least encompassed by the correct construction of claim 1. Because of this, and because Petitioner agrees that the arguments in the Petition meet this construction, we accept Patent Owner’s construction as correct for the purposes of this Decision.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“We do not agree with Patent Owner that Petitioner’s showing uses the same sound data to teach the “first sound data” of limitation 1.a and the “second sound data” of limitation 1.c. Patent Owner is correct that Rosenberg’s claim 5 describes the determination of a volume threshold based on the volume of the ambient audio signal in which characteristic form(s) (e.g., the name of the user of the media player) are present. Ex. 1006, 13:66–21, 14:28–30. However, the Petition describes using Fu’s “predetermined threshold” in combination with Hart-787’s device, which attenuates audio output of a device upon detecting a user’s utterance intended to gain the attention of the device, in order to “include adjusting the audio output volume of a wirelessly-linked audio-producing device when the voice-controlled device determines that the ambient noise level at the time a Ex. 1004, 2:22–37, 5:61–6:10, 9:18–25; Ex. 1005 ¶¶ 24, 32, 54; Ex. 1003 ¶¶ 88–89). Petitioner further proposes including a threshold that is advantageously based on the environment in which the device is operating as described in Fu, for example to respond to differing levels of noise at different times of day. Id. at 26, 29–30, 40 (citing Ex. 1006, 10:42–67, 14:28–30; Ex. 1003 ¶¶ 48–53, 55, 58, 87, 91, 107–109). We agree with Petitioner that Patent Owner’s arguments address the references individually instead of addressing the combination of the teachings proposed in the Petition. See Pet. Reply 8, 13–14; see also Dec. on Inst. 21–22, 23–24, 25–26. The Petition relies upon a combination of elements of Hart-787 with the predetermined threshold as taught in Fu and with establishing such a threshold based on the operating environment of a device as in Rosenberg. Pet. 26–31, 34–41. Patent Owner is correct that Rosenberg’s threshold is set at the time of the utterance in Rosenberg’s claim 5 and cites Petitioner’s declarant as “conceding” issues regarding how “Rosenberg’s volume threshold is determined.” PO Resp. 20–21. But this argument and the ostensible concession do not squarely address the proposed combination, which combines Fu’s teaching of an adjustment unit that “compares the volume of the ambient noise received . . . to a predetermined threshold” with Rosenberg’s teaching that such “a threshold may be ‘determined based on the volume of [an] ambient audio signal.’” Pet. 39, 40 (emphasis omitted) (quoting Ex. 1006, 14:28–30). While Patent Owner argues that “Petitioner has not proposed using a predetermined/pre-set threshold or a previously established threshold based on environmental noise in the combination of Hart-787 with F[u] and Rosenberg” (PO Resp. 46), we find, on the contrary, that the Petition describes a combination based predetermined threshold” and on a threshold “determined according to an environmental noise level.” Pet. 29–30. Thus, we find Petitioner’s unpatentability grounds do not suffer from the issues Patent Owner argues are a consequence of the purported use of the same sound data for the “first sound data” of claim limitation 1.a and for the “second sound data” of claim limitation 1.c. We do not agree with Patent Owner’s arguments regarding Fu’s teachings with respect to limitation 1.e’s “transition from a first state having a first volume level to a second state having a second volume level that is less than the first volume level” because these arguments similarly do not address the proposed combination. See PO Resp. 26–30. The Petition cites Hart-787 for attenuating the volume of an audio-producing device when a wake word is issued. Pet. 32–34, 43–44. The Petition cites Fu for adjusting volume of an audio-producing device if the level of ambient noise exceeds a predetermined threshold. Id. at 36–39, 44–45. Thus, even if Fu teaches only increasing the volume of an audio-producing device if the predetermined threshold is exceeded, the Petition relies on the combination of teachings of Hart-787 and Fu, and Patent Owner’s argument that neither reference teaches “decreasing a controllable appliance’s volume output when a previously established volume threshold is exceeded” (PO Resp. 30) does not address the combination proposed. Patent Owner’s argument that “Petitioner has not proposed modifying Fu to decrease a controllable appliance’s volume output when a volume threshold is exceeded” (PO Resp. 30) similarly does not address the combination proposed in the Petition. We also find that the preponderance of the evidence supports Petitioner’s showing regarding the motivation to combine the references.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We also find that the preponderance of the evidence supports Petitioner’s showing regarding the motivation to combine the references. transmitted volume down control signals as the means for attenuating audio output, Petitioner contends that Hart-787 “broadly teaches” that a device transmits control command signals to the audio-producing device, relying on the testimony of its declarant. See Pet. 23 (citing Ex. 1004, 5:47–51; Ex. 1003 ¶ 82), 43–44 (citing Ex. 1004, 1:67–2:7, 2:26–27, 5:47–51; Ex. 1003 ¶ 118). In addition, Petitioner shows that these control signals were well-known in the art and would have been known to one of ordinary skill in the art at the time of the invention, supporting its showing with additional testimony from its declarant. Id. at 44 (citing Ex. 10183, 2:39–47, 5:35–38; Ex. 10194 ¶¶ 3, 13; Ex. 1003 ¶¶ 44–45, 118). We conclude Petitioner’s evidence regarding the showing in Hart-787 is sufficient with respect to this point. Hart-787 describes altering a signal sent to the speaker to attenuate the audio from that speaker. Ex. 1004, 1:67– 2:1. Petitioner’s declarant testifies that using transmitted control signals to do this would have been known to one of ordinary skill. Ex. 1003 ¶¶ 44–45, 82, 118. We consider Petitioner’s evidence regarding what one of ordinary skill in the art would have understood from Hart-787’s disclosure to be sufficient for the showing regarding the “causing one or more commands to be automatically issued to the controllable appliance to thereby cause” that appliance to transition to a lower volume level, as required in limitation 1.e. While Patent Owner argues that Petitioner’s declarant “concede[s] that Hart- 787 does not disclose or teach how its voice-controlled device decreases the audio output of the controllable appliance,” the cited portion of the” slip op. at 25
Patent outcomesUS 10,930,276 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,930,276 - Simpson Strong-Tie Company Inc. v. Columbia Insurance CompanySome claims unpatentablePTAB · Mar 15, 2023 · PGR2021-00109 · APJ Stephen E Belisle · PGR · Final written decision
Claims 1–12, 15–17, and 21–23 are unpatentable; the revised contingent motion to amend is granted for claim 32 and denied for claims 24–31, 33–35, 38–40, and 44–46.
RulingsFinal written decision- Skill levelSkill level board ownOther
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art, at the time” slip op. at 22
- BurdenNot shown unpatentable
“Accordingly, based on the foregoing and the complete record before” slip op. at 38
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“C. Claim Construction We apply the claim construction standard articulated in Phillips v.” slip op. at 23
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteMixed
“persuaded by Petitioner that the limitations “a channel-shaped portion configured to receive the structural component” and “a base configured to receive an end portion of the structural component thereon to support the structural component” would not have informed the skilled artisan, with reasonable certainty, about the scope of the claimed invention. See Energizer Holdings, Inc. v. Int’l Trade Comm’n, 435 F.3d 1366, 1370 (Fed. Cir. 2006) (“When the meaning of the claim would reasonably be understood by persons of ordinary skill when read in light of the specification, the claim is not subject to invalidity upon departure from the protocol of ‘antecedent basis.’”). Accordingly, we conclude that Petitioner” slip op. at 40
Patent outcomesUS 11,021,867 mixedClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · NautilusPatents in suitUS 11,021,867 - Meta Platforms, Inc. v. Wrinkl, Inc.All claims unpatentablePTAB · Nov 23, 2022 · IPR2021-00882 · APJ Neil T Powell · IPR · Final written decision
Claims 1–23 are unpatentable as obvious over Ji and Sarafa; the Board did not reach the Ji, Sarafa, and Oh ground.
RulingsFinal written decision- Strike new argumentNew argument consideredMixed
“We do not agree with Patent Owner that the arguments in sub-section 2 on pages 8–9 of Petitioner’s Reply are improper new arguments. Rather, we find these arguments properly elaborate on the Petition, in response to the proposed construction of “link” in Patent Owner’s Response. Although we agree with Patent Owner that the Petition does not include the phrase “quoted message identifier,” Sarafa explains that the quoted message cited in the Petition and the “quoted message identifier” are part of the same message package. E.g., Ex. 1007 ¶ 83. Patent Owner contends that Petitioner’s citation of the quoted message in the Petition and then the quoted message identifier in the Reply is like if I have a patent to some kind of car and someone points to a Porsche and says, look, the Porsche has an engine, and then we argue about an engine, and then they come back and say, well, we're referring to the turbo charger in the engine in their reply, even though they never mention turbo charger, and said that's the key, it's like, well, we weren't on notice of that. Tr. 71:2–9. We find this unpersuasive. Patent Owner does not explain why a reply that cites a subcomponent of an item cited in the petition would necessarily go beyond properly elaborating on the arguments in the petition.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We find Petitioner’s proposed definition reasonable and consistent with the prior art before us. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (determining that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). Accordingly, we apply the level of skill identified by Petitioner. Additionally, we agree with Patent Owner that the level of skill it identifies differs very little from Petitioner’s proposed level of skill, and our analysis below would be the same under either party’s identified level of skill.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“In order to resolve the parties’ patentability dispute, we only need to resolve whether the correct construction of “link” requires using an address specifically (rather than data generally) to “point to” a message. We find the record lacks persuasive support for such a construction. Looking to the ’198 patent itself first, neither the claims nor the Specification says anything about “point[ing] to” a message or another resource. See generally Ex. 1001. The ’198 patent mentions “address” only once, and that passage refers to a person’s address, not a message’s address. Id. at 12:29–33. Additionally, Patent Owner does not cite any other intrinsic evidence, such as the prosecution history of the ’198 patent, supporting a construction of “link” requiring a message’s address. See, e.g., PO Resp. 10–12; PO Sur-reply 2–7.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Weighing the parties’ arguments and evidence, we find that Petitioner demonstrates by a preponderance of the evidence that a person of ordinary skill in the art would have been motivated to combine the teachings of Ji and Sarafa. As explained below, Petitioner persuades us that a person of ordinary skill in the art would have understood that Ji teaches automatic scrolling, and that Sarafa’s automatic scrolling would have beneficially complemented Ji’s. Pet. 21–22; Pet. Reply 14–17; Ex. 1003 ¶¶ 75–77; Ex. 1018 ¶ 47. Additionally, regardless of whether Ji teaches automatic scrolling in paragraph 92, Petitioner persuades us that Ji and Sarafa address similar problems related to tracking and understanding convoluted conversations in messaging systems. See Pet. 16–21; Ex. 1003 ¶¶ 64, 65, 70, 73, 74. As Dr. Cockburn testifies, Ji emphasizes the problem that users cannot quickly find and understand messages in complicated message streams. Ex. 1003 ¶ 64 (citing Ex. 1006 ¶ 2); Pet. 16. Petitioner also persuades us that Sarafa addresses such problems, at least in part, by expressly teaching certain advantages of its scroll-back feature, such that a person of ordinary skill in the art would have considered it advantageous to add Sarafa’s scroll-back feature to Ji’s system. See Pet. 18–19; 21–23; Ex. 1003 ¶¶ 70, 74. For example, addressing the same problems discussed in Ji, Sarafa explains that its scroll back feature would facilitate a user’s ability to understand a complicated conversation because “[m]aking available the context of a quoted message may benefit a user in understanding a quoted message by providing messages that were displayed before and/or after the quoted message so as to play the quoted message in context.” Ex. 1007 ¶ 90; Pet. 19; Ex. 1003 ¶ 70. Similarly, Sarafa explains that its scroll back feature “provid[es] additional context to users . . . , improving the user experience of quoted messages for its users.” Ex. 1007 ¶ 23; Pet. 19; Ex. 1003 ¶ 70. We find that these disclosed benefits would have provided compelling motivation for a person of ordinary skill in the art to add Sarafa’s scroll back feature to Ji’s messaging system. Pet. 19–23; Ex. 1003 ¶¶ 71, 73–77. Indeed, as Dr. Cockburn explains, “[s]ince Ji also quotes the original message in the reply, Sarafa would therefore be a natural complement to Ji.” Ex. 1003 ¶ 77.” slip op. at 42
Patent outcomesUS 9,860,198 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,860,198 - Twitter, Inc. / Google LLC v. B.E. Technology, LLCAll claims unpatentablePTAB · Sep 7, 2022 · IPR2021-00484 · APJ Neil T Powell · IPR · Final written decision
Claims 1–19 are unpatentable under the Guyot-based obviousness grounds, including Guyot and Apte and the applicable dependent-claim references.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proffers that a person having ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related subject, and two to three years of work experience in network-based technologies.” Pet. 9 (citing Houh Decl. ¶¶ 5761). Patent Owner “only disagrees with Petitioner’s and Dr. Houh’s assessment of the applicable level of skill in the art with respect to its failure to acknowledge that a person of ordinary skill in the art would have a working knowledge of network-based targeted advertising.” PO Resp. 9. We agree with Petitioner’s proffered level of ordinary skill in the art and with Patent Owner’s clarification because the prior art of record is in the field of network-based targeted advertising, and knowledge of such a field would assist a person of ordinary skill in the art in appreciating the tools necessary to implement it. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (stating that the absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown). Accordingly, we adopt Petitioner’s proffered level of ordinary skill in the art with the caveat proposed by Patent Owner that the level of skill includes working knowledge of network-based targeted advertising.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1. “a computer user” and “a computer” Claim 1 recites “permitting a computer user to access one or more servers via a network” and “transferring a copy of software to a computer associated with the computer user.” According to Petitioner, the claim recites only one “computer” and only one “computer user.” Reply 1. Nevertheless, Petitioner argues, the claim language permits multiple computers or multiple users, but does not require multiple computers or multiple users. Id. (citing Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008)). Petitioner’s arguments address whether the claim may properly read on a single user per computer scenario. Id. Patent Owner agrees with Petitioner that “the claims do not preclude a single-user/single-computer configuration.” Sur-reply 1. Patent Owner however takes issue with Petitioner’s “single-user/single-computer” configuration because of the scope of a different claim term: the “unique identifier identifying the computer.” Id. According to Patent Owner, Petitioner has failed to show that a unique identifier identifies, and is associated with, a computer. Id. at 1–2 (concluding that “Guyot and Robinson include no teaching of an advertising system limited to a ‘single-user/single-computer’ configuration, and Petitioner cites nothing in those references to the contrary.”). We find Patent Owner’s arguments non-responsive to the issue presented by Petitioner concerning the terms “computer” and “computer user.” Indeed, there is no dispute between the parties that the claim may encompass situations in which a single computer is operated by a single computer user, though the claim could also encompass multiple computers and multiple users. See Reply 1; Sur-reply 1; see also KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000) (“This court has repeatedly emphasized that an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’”). Accordingly, because the parties’ disputes center around other claim terms, we are not persuaded that the scope of “computer” and “computer user” needs further clarification.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We recognize that, within the context of the Specification, the association of the computer and the computer user may be implemented in one embodiment by using a table or registry of users that are authorized to use that computer. See id. at 29:6630:2 (explaining that “registration can manage the relationships between installations and users; recognizing that a user may use more than one installation and an installation may support more than one user.”). Notwithstanding such an embodiment, however, the claim provides no technical requirement of the “computer”-to-“computer user” association. Patent Owner’s argument presents us with the difficult process of drawing a line between interpreting the claim within the context of the Specification and importing embodiments from that Specification into the claim. We may not “read into a claim a limitation from a preferred embodiment, if that limitation is not present in the claim itself.” Bayer AG v. Biovail Corp., 279 F.3d 1340, 1348 (Fed. Cir. 2002); see also Reply 2 (Petitioner arguing that Patent Owner’s support in the Specification reflects a non-limiting example that does not limit the claims). Accordingly, we decline to import into the word “associated” the requirement of an actual link or connection between data, such as via a table or registry. On the other hand, Patent Owner makes a valid point that in a computer network environment, a person of ordinary skill in the art would recognize that associating requires a relationship between two pieces of information. PO Resp. 14 (arguing additional requirement of a database, table, or the like). Although we do not see the claims as supporting technical details of how these relationships are maintained (such as by using a database), we understand the instances of “associated” in the claim point to a relationship between data or information. For instance, in one claim limitation, the “computer usage information” has a relationship (or is “associated”) with the “utilization of the computer” because that information includes “data regarding one or more programs run on the computer.” Ex. 1001, 34:3235. Thus, the relationship between the recited pieces of data is that of a set and a subset: “utilization of the computer” is part of “computer usage information.” The plain use of the word “associated” in this manner informs us that the term should not be restricted to any particular manner of recording how the pieces of information are related or connected. With the concept of “relationship” in mind, we find that Petitioner’s proffered claim construction is in accord: to join or connect together. See Reply 1–2. The connection of the recited claim elements, in the plain and ordinary context of the claim language, refers to a relationship between these elements. And this connection or relationship need not be direct, like the rows of a table, or the list of users in a specific computer’s registry. Rather, a connection or relationship could also be indirect, such as the example in the Specification of the relationship between a user and the computer. See id. at 2 (citing Ex. 1001, 22:4548). In that example, a user ID (representing a computer user in the computer network) is assigned to the copy of the software downloaded by the user. Ex. 1001, 22:4548. And it is the direct relationship between the user ID and that particular copy of the software that evidences also an indirect relationship between the user (via the user ID) and the computer on which the software is installed. Put another way, by assigning the user ID to the client software application, the user ID is also connected (or has a relationship with), albeit indirectly, to the computer on which the client software application is installed. Thus, we determine that Patent Owner’s contention of requiring a “relationship” for the term “association” is appropriate if taking also into account that the relationship may be direct or indirect, as explained above, and without requiring a specific data linkage as argued by Patent Owner.” slip op. at 13
- Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed
“Furthermore, Dr. Houh provides a sufficiently thorough and reasonable explanation of how the subscriber ID of Guyot (“unique identifier”) maps to the information on websites visited. Supp. Houh Decl. ¶¶ 5961. Describing Guyot’s database operation such that the subscriber identifier identifies the website visited information explains that, in a singleuser on a single computer scenario, the subscriber identifier is associated with the computer and the subscriber identifier also uniquely identifies the website-visited information. Id. We find this testimony persuasive and give it credit over the testimony of Mr. Zatkovich. The testimony of Mr. Zatkovich on this point characterizes Subscriber Data as only an identifier of a subscriber, because the computer and the subscriber are separate entities under the ’410 patent. Zatkovich Decl. ¶¶ 5962. We have rejected this characterization in our discussion of the claim construction, because the ’410 patent Specification discloses, among other embodiments, that the userID identifies the user, the demographically targeted advertisement for the user, and the computer. Ex. 1001, 22:4348; see supra Section II.B.3; see also Supp. Houh Decl. ¶¶ 5456 (testifying that the ’410 patent also describes the situation in which a user has only one computer and that there is no requirement in the claims (nor does Guyot speak to) the situation in which a computer must support multiple user accounts). In other words, the claim language and the Specification of the ’410 patent do not support the contention that the user ID and the computer must each be separately identifiable, but somehow linked. In fact, Mr. Zatkovich testified to the contrary in his deposition. Ex. 1098, 68:924 (stating, with regard to a string of “1234” being a computer identifier, that the “same value of an identifier could be used for user ID and a computer ID, but they would have different meanings.”). Furthermore, Patent Owner’s arguments rebutting Dr. Houh’s explanation of Guyot’s database focus on another notion we have rejected, that the linking in the database must be some direct link between the subscriber identifier and a computer. See Sur-reply 1314.” slip op. at 48
Patent outcomesUS 8,549,410 unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,549,410 - Nested Bean, Inc. v. Big Beings USA Pty Ltd And LB Online & Export Pty Ltd D/B/A Love To Dream Online And ExportsSome claims unpatentablePTAB · Jan 24, 2022 · IPR2020-01234 · APJ Kevin W Cherry · IPR · Final written decision
Claims 2–16 are unpatentable; claims 1, 17, and 18 were not shown unpatentable, principally because the cited combinations did not establish claim 1’s arm-retention limitation.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“Generally, a preamble is not limiting.” Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283, 1292 (Fed. Cir. 2015). Whether a preamble is limiting is “determined on the facts of each case in light of the overall form of the claim, and the invention as described in the specification and illuminated in the prosecution history.” Applied Materials, Inc. v. Advanced Semiconductor Materials Am., Inc., 98 F.3d 1563, 1572–73 (Fed. Cir. 1996). A preamble limits the claimed invention if it recites essential structure or steps, or if it is “necessary to give life, meaning, and vitality” to the claim. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). A preamble is not limiting, for example, if the patentee “defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.” Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). And, a preamble is generally not limiting unless there is “clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art.” Id. A preamble can be limiting if it recites “additional structure or steps underscored as important by the specification,” is “essential to understand limitations or terms in the claim body,” or provides necessary structure absent from the claim body. Id. at 808–09. We agree with Petitioner that the preamble is not a limitation. The term “swaddling suit” is merely a descriptive name for the apparatus that is covered by the claims. IMS Tech, Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434 (Fed. Cir. 2000) (Terms in the preamble are not limiting if they “merely give[] a descriptive name to the set of limitations in the body of the claim that completely set forth the invention.”). It is well-established that “[a]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir 1990). For example, in Cochlear Bone Anchored Solutions AB v. Oticon Med. AB, the Federal Circuit held that a statement of intended purpose in the preamble—“for rehabilitation of unilateral hearing loss”—was not limiting, because the claimed apparatus was fully structurally claimed in the body of the claim, and its structure would allow it to function identically whether or not used for its stated intended purpose. See 958 F.3d 1348, 1355 (Fed. Cir. 2020). We find that this is the case here. The bodies of claims 1 and 2 recite structurally complete inventions, which would function identically whether or not they are used for its stated intended purpose. Indeed, if the term “swaddling suit” were replaced by the word “garment,” it would not change the nature of the claim. This interpretation is consistent with the Specification that The invention has been developed primarily for use as a means for swaddling infants for safe sleeping. However, it will be appreciated that the invention is not restricted to this particular use. Ex. 1001, 1:7–10; see also id. at 11:6–11 (the alleged invention “is not restricted to these particular fields of use and it is not limited to particular embodiments or applications described herein”). slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“meaning. But we further agree with Patent Owner that the plain and ordinary meaning for that term is simply “to hold or to keep.” See Ex. 2022. Petitioner’s argument that the Specification uses “retain” to mean that the wing portions are closed, as opposed to having open ends like sleeves reads retain out of context. The portion of the Specification identified by Petitioner states The ends of the wing portions 140 may be open, allowing the hands to extend through the opening end as shown in FIG. 5E. Alternatively, the ends of the wing portions 140 may be closed so that the hands are retained within the wing portions 140 as shown in FIGs. 5C and D. Ex. 1001, 10:3–7 (emphasis added). We do not read this passage as creating a special meaning for “retained,” as Petitioner suggests. Reply 7–8. Petitioner focuses on the portion of this statement that “the ends of the wing portions . . . may be closed so that the hands are retained. . .” to argue that the Specification uses the term “retained” to mean “closed.” However, this argument ignores the end of the sentence that “the ends of the wing portions . . . may be closed so that the hands are retained within the wing portions.” When considered in its full context, we agree with Patent Owner that this passage is consistent with Patent Owner’s construction. See Sur-Reply 11. Indeed, the passage simply uses “retained” in its ordinary sense—i.e., “the ends of the wing portions 140 are closed so that the hands are [held or kept] within the wing portions.” Accordingly, we determine that “retain” has its plain and ordinary meaning, i.e., “to hold or retain.”” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill would have had either formal or informal training in fashion or clothing design with at least 1 year of experience. A person of ordinary skill in the art would likely have had experience designing, producing, or working with clothing for infants, either in a formal or informal setting, including as a new parent or expected parent. Pet. 22–23. Patent Owner does not dispute this definition of a person of ordinary skill. See generally PO Resp. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill as it appears to be consistent with the level of skill reflected by the specification and in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art). E. OVERVIEW OF THE PRIOR ART” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“limitations of claims 1 and 2, including: (a) “a swaddling suit,” (of limitations [1P] and [2P] above), (b) “wing portions extending laterally from a bodice portion” (limitations [1E] and [2E] above), (c) “wing portions” that have “a wing tip at an uppermost portion of each of the wing portions that is positioned above a level of the neck hole of said suit” (limitations [1F] and [2F]), and (d) “wing portions” that “retain an infant’s arm and hand in a hand-raised and elbow-bent position” (limitation [1G]) and “wing portions” that “retain an infant’s arm” (limitation [2G]). PO Resp. 14–29. On the full record and as we explain in detail below, we agree with Patent Owner that Parks fails to disclose “wing portions” that “retain an infant’s arm and hand in a hand-raised and elbow-bent position” (limitation [1G]). iii. Undisputed Limitations With respect to the undisputed limitations, we have reviewed the record and determine that Petitioner has shown by a preponderance of the evidence that Parks discloses limitations [1A]–[1D], [1H], [2A]–[2D], and [2H]. We consider the arguments regarding the disputed limitations below.” slip op. at 28
Patent outcomesUS 9,179,711 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,179,711
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.