• Embody, Inc. / Zimmer Biomet Holdings, Inc. v. Lifenet HealthSome claims unpatentable
  PTAB · Aug 4, 2026 · IPR2025-00249 · APJ Michael J Fitzpatrick · IPR · Final written decision

  Claims 1 and 4–8 are unpatentable: claims 1 and 4–6 as obvious over Huang2 and Kuo, and claims 7–8 as anticipated by Huang2; claims 2–3 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “(“POSITA”) “would be a Ph.D. student with a minimum of two years of experience in their faculty advisor’s laboratory” and would have an understanding of “electrospinning fibers, including for tissue engineering, tissue engineering techniques, and using/performing FFT analysis.” Pet. 20– 21 (citing Ex. 1003 § II.C7). Patent Owner does not dispute Petitioner’s proposal but specifies the set of disciplines within which the Ph.D. would have been earned, namely “bioengineering, chemical engineering, mechanical engineering, or a related engineering discipline.” PO Resp. 6. We adopt and apply Petitioner’s proposal as clarified by Patent Owner regarding the Ph.D. discipline.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “At the outset, we agree with Patent Owner that the Specification purports to define “major peaks” in the following sentence: “The ‘major peaks’ herein refer to peaks higher than the average of the peaks in the result.” Ex. 1001, 13:28–29. We determine that this language satisfies at least two of the criteria set forth in Alnylam. Specifically, the sentence at “refers to” to explain what qualifies as major peaks. That is not the end of the inquiry, however, as we find there is still some ambiguity as to whether the patentee intended to define “major peaks” so as to require so-called “minor peaks” in the claimed invention. See Bell Atlantic, 262 F.3d at 1268 (“[T]he intrinsic evidence must ‘clearly set forth’ or ‘clearly redefine’ a claim term so as to put one reasonably skilled in the art on notice that the patentee intended to so redefine the claim term.”). Importantly, the Specification does not treat the existence of minor peaks as prerequisites for the existence of major peaks. Indeed, the Specification does not discuss “minor peaks” at all. See generally Ex. 1001. Likewise, none of the claims of the ’227 patent, whether challenged or unchallenged, recites “minor peaks” or any additional peaks beyond the disputed “major peaks.” Id. at 23:30–24:42. Nor does the Specification include an example of FFT analysis results in which the average of the peaks therein is calculated and those higher than the average are identified as major peaks.8” slip op. at 9

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

    “Petitioner has the better position. Huang2 teaches crosslinking and provides a reason for doing so (stability). In particular, Huang2 states: “To better mimic skin ECM, electrospun collagen fibers have been fabricated, however, the rapid degradation and poor mechanical properties determine that either crosslinking or combination with other materials is necessary to obtain a stable scaffold.” Ex. 1005, 1791 (emphasis added). It is true that, in describing work actually carried out, Huang2 states that blending with PCL was performed and does not mention crosslinking. See id. at 1792 (“Nanofibrous matrices of PCL and Collagen at a weight ratio of 3:1 were fabricated using electrospinning as previously described.”). However, the prior art – here, Huang2 – is not limited to that which it describes having created. See In re Mills, 470 F.2d 649, 651 (C.C.P.A. 1972) (“a reference is not limited to the disclosure of specific working examples”); see also In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968) (“The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.”); In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992) (“It is well settled that a prior art reference is relevant for all that it teaches to those of ordinary skill in the art.”). Huang2 teaches two stabilization methods when using collagen in scaffolds. Huang2 states that one or the other “is necessary to obtain a stable scaffold” (when using collagen), but it does not preclude or teach away from using Patent Owner-cited testimony of Dr. Mikos is not as definitive as Patent Owner suggests; Dr. Mikos’s testimony is that a person of ordinary skill in the art “typically would not have done both.” Ex. 2015 ¶64 (emphasis added). The bottom line is that Huang2 teaches the person of ordinary skill in the art two ways to stabilize scaffolds/matrices comprised of collagen, provides a reason for doing so (stability), and does not teach away from using both. We are persuaded that a “scaffold comprising crosslinked fibers comprising collagen” would have been obvious in view of the cited teachings of Huang2.” slip op. at 33

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We are not persuaded by Appellant’s citations to either reference. As discussed above, Petitioner’s Ground 1 is premised on a person of ordinary skill in the art altering the native flat sheet structure of Huang2 by rolling it into a jelly-roll structure as taught by Kuo. See Pet. 41 (Beginning its claim 2 arguments with the following: “Claim 1 is obvious for the reasons expressed above in § X.A., supra, which are incorporated herein.”); see also Pet. Reply 17 (“[B]ased on the explicit teaching of Kuo, a POSA would have been motivated to take the electrospun flat scaffold made by the techniques of Huang2, seed it with the desired cells, and roll it to treat a tendon and ligament.” (emphasis added)). Indeed, the paragraphs of Kuo that Petitioner cites for disclosing “scaffold sheets,” explicitly describe rolling them into jelly-roll like structures. See Ex. 1018 ¶7 (stating that “the sheet is spirally contacting a scaffold sheet of fibrous material with a cell; and rolling the scaffold sheet in a jelly-roll like manner to form a spirally wound tissue construct”), ¶22 (describing a method comprising “forming a tissue construct by contacting a scaffold sheet of fibrous material with a cell; and rolling the scaffold sheet in a jelly-roll like manner to form a spirally wound tissue construct” and implanting it in a patient). Petitioner fails to argue that that “one or more elongated sheets” recited in claim 2 would encompass the rolled structure of its proposed modification. Nor does Petitioner articulate a claim construction argument that could support such an argument. Petitioner has failed to prove, by a preponderance of the evidence, that claim 2 would have been obvious over Huang2 and Kuo.” slip op. at 42

  Patent outcomesUS 11,318,227 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Markman · KSR
  Patents in suitUS 11,318,227
• Motorola Solutions, Inc. v. Sta Group LLCSome claims unpatentable
  PTAB · Mar 6, 2025 · IPR2023-01292 · APJ David C Mckone · IPR · Final written decision

  Claims 1–4, 6–10, and 17–21 are unpatentable over Ohel; claims 5 and 11–16 were not shown unpatentable over Ohel or Nigawara.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “III. ANALYSIS A. Level of Skill in the Art Petitioner, relying on the testimony of Mr. Williams, contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in computer science, electrical engineering, or a similar field, and would have had approximately two years industry experience in networking or communication systems.” Pet. 3 (citing Ex. 1002 ¶¶ 55–58). Patent Owner does not dispute Petitioner’s proposal. PO Resp. 9. Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. On the complete record, we adopt this level of skill.” slip op. at 9

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

    “We have considered the parties’ citations to the specification and find examples that support Petitioner’s view that the term “entity” is broad enough to encompass dispatchers and individual users. See e.g., Ex. 1001, 3:52–4:5, 7:18–20, Fig. 1). However, we find no disclosure that redefines “entity” or excludes dispatchers and individual users from the category of “entity.” Patent Owner’s best examples (e.g., Ex. 1001, 1:15–21, 3:59–62) are no more than non-limiting examples. On the complete record, we conclude that “entity” is broad enough to include dispatchers and individual users.” slip op. at 20

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

    “have used a queue with Ohel’s system. This is insufficient because it does not provide evidence of a reason why a skilled artisan would have implemented Ohel’s system with a queue. See Auris Health, Inc. v. Intuitive Surgical Operations, Inc., 32 F.4th 1154, 1158 (Fed. Cir. 2022) (“The motivation-to-combine inquiry asks whether a skilled artisan ‘not only could have made but would have been motivated to make the combinations . . . of prior art to arrive at the claimed invention.’” (quoting Belden Inc. v. Berk- Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis omitted))).” slip op. at 35

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot reached

    “have used a queue with Ohel’s system. This is insufficient because it does not provide evidence of a reason why a skilled artisan would have implemented Ohel’s system with a queue. See Auris Health, Inc. v. Intuitive Surgical Operations, Inc., 32 F.4th 1154, 1158 (Fed. Cir. 2022) (“The motivation-to-combine inquiry asks whether a skilled artisan ‘not only could have made but would have been motivated to make the combinations . . . of prior art to arrive at the claimed invention.’” (quoting Belden Inc. v. Berk- Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis omitted))).” slip op. at 35

  Patent outcomesUS 7,324,802 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,324,802
• Fisher & Paykel Healthcare Limited v. Resmed LimitedSome claims unpatentable
  PTAB · Oct 23, 2018 · IPR2017-00501 · APJ James J Mayberry · IPR · Final written decision

  Claims 61–64 are unpatentable under § 103; claims 1–60, 65, and 66 were not shown unpatentable under § 103.

  RulingsFinal written decision

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

    “(Paper 1, “Pet.”) requesting inter partes review of claims 1–66 (the “Challenged Claims”) of U.S. Patent No. 9,027,556 B2 (Ex. 1001, the “’556 patent”). Patent Owner, ResMed Ltd. (“ResMed”), filed a Preliminary Patent Owner Response to the Petition. Paper 7 (“Prelim. Resp.”). We instituted trial on claims 61–64 and 66 only. See Paper 8 (“Dec. on Inst.” or “Institution Decision”), 42–43 (instituting trial on claims 61–64 and 66 on four of the twelve asserted grounds); cf. Pet. 9–10 (listing the twelve asserted grounds).” slip op. at 2

  • BurdenOther

    “D. Asserted Grounds of Unpatentability In inter partes reviews, a petitioner bears the burden of proving unpatentability of the challenged claims, and the burden of persuasion never shifts to the patent owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail in this proceeding, Fisher must support its challenge by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). Accordingly, all of our findings and conclusions are based on a preponderance of the evidence.” slip op. at 27

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Petition, how Barnett teaches using a different material that is more rigid than silicone for neck 46 and ribs 56. The Petition lays out certain factual statements, but draws no conclusion from those statements, leaving us to somehow connect the dots.” slip op. at 33

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

    “patent . . . that claims as innovation the combination of two known devices according to their established functions.” KSR Int’l Co., 550 U.S. at 418. Importantly, “obviousness must be determined in light of all the facts, and . . . a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (emphasis added); see also Winner Int’l, 202 F.3d at 1349 n.8 (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”). Accordingly, we weigh Fisher’s and ResMed’s evidence with respect to whether a person having ordinary skill in the art would have been motivated to modify Barnett with Ogden’s teaching of a main body of a cushion module using a material that is more” slip op. at 45

  Patent outcomesUS 9,027,556 mixed
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,027,556
• Unified Patents Inc. v. Digital Stream IP, LLCSome claims unpatentable
  PTAB · Mar 9, 2018 · IPR2016-01749 · APJ Michelle N Wormmeester · IPR · Final written decision

  Claims 1, 4, 6–13, 20, and 22 are unpatentable as obvious; claims 2 and 3 were not shown unpatentable because the cited art did not establish portability or handheld use.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “We agree with Petitioner. Although Petitioner bears the burden of correctly identifying the real parties-in-interest, “[w]e generally accept the petitioner’s identification of real parties-in-interest at the time of filing the petition.” See Zerto, Inc. v. EMC Corp., Case IPR2014-01254, at 6 (PTAB Mar. 3, 2015) (Paper 35) (citing Office Patent Trial Practice Guide, 77 Fed. Reg. 48,680, 48,695 (Aug. 14, 2012)). Here, Petitioner identifies in its Petition the real party-in-interest: “Pursuant to 37 C.F.R. § 42.8(b)(1), Unified Patents Inc. (‘Unified’ or ‘Petitioner’) certifies that Unified is the real party-in-interest.” Pet. 1. Such identification gives rise to a rebuttable presumption that Petitioner has complied with its obligation to identify all real parties-in-interest. See Zerto at 6–7. Patent Owner recognizes that “it [is] incumbent on the patent owner to come forward with some rebuttal evidence.” PO Resp. 52. In response to Petitioner’s identification of the real party-in-interest, Patent Owner contends that “this is not an instance where a petitioner’s certification in a petition can be taken at face value” because “evidence proffered by [Petitioner] in support of its position was withdrawn deliberately.” Id. at 53. We do not, however, require evidence beyond a petitioner’s identification of real parties-in-interest in the absence of rebuttal evidence that such identification is erroneous or incomplete. Petitioner’s withdrawal of Exhibit 1012 from the record does not constitute such rebuttal evidence. In view of the foregoing, we find that the circumstances here do not raise sufficient doubt about whether Petitioner has satisfied its obligation to name all real parties-in-interest. Therefore, we determine that the Petition should not be dismissed on this basis.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “by applying the broadest reasonable interpretation in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). Under that standard, claim terms generally are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). A “claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer,” however, and clearly set forth a definition of the claim term in the specification. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Petitioner proposes an express construction for the claim term “transceiver.” Pet. 10. Patent Owner does not propose an express construction for any claim term. See generally PO Resp. In light of the parties’ arguments, we determine that no term requires express interpretation to resolve any controversy in this proceeding.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed

    “Rovira teaches each of the recited claim limitations, Petitioner must provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In that regard, Petitioner directs us to Rovira’s teaching that “it is highly desirable to communicate program content information” because “having such information as music title, composer, artist and record label is vital” to music lovers. Pet. 16 (citing Ex. 1003, 1:30–32, 2:5–10); see also Ex. 1003, 1:32–35 (“Frustration of customers, and possible loss of revenue due to subscription cancellation can occur if a subscriber has no method of knowing the title, composer or artist of the particular selection of music.”). Petitioner argues it, thus, would have been obvious to modify Schotz’s system to incorporate a signal that includes both audio data and program data, as taught by Rovira. Pet. 17; see also, e.g., id. at 21 (“[O]ne would have been motivated to (1) modify Schotz’s transmitter 4 to transmit the digital audio signal of Rovira . . . and (2) modify Schotz’s receiver 6 to receive this digital audio signal.”); id. at 23 (“[T]his modification would result in Schotz’s user interface switch 18 selecting the digital audio data . . . within the digital audio signal [of Rovira].”); id. at 25 (“It would have been obvious to utilize the tuner 110 of Rovira in Schotz for [tuning] to frequencies that Schotz is receiving based on its use of Rovira’s digital audio signal. . . . Schotz is essentially doing this already, i.e., tuning to a frequency associated with audio data.”); id. at 27 (“[I]t would have been obvious to modify Schotz to utilize Rovira’s disclosed demodulator 125 to extract the selected digital audio data and the audio program information from the carrier wave, as taught by Rovira.”); id. at 28–29 (“It would have been obvious to modify Schotz to include the digital to analog converter 160 disclosed in Rovira. . . . The receiver 6 of Schotz would necessarily need a digital to analog converter when using the digital signals disclosed in Rovira so that the user can hear the selected music.”). We are persuaded by Petitioner’s reasoning, including specifically the quoted material in the preceding string citation to the Petition, for modifying Schotz’s system to include Rovira’s signal as well as various components for processing such a signal. See Kahn, 441 F.3d at 988. We note that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton,” and, in modifying Schotz’s system to include Rovira’s signal, would have made any necessary additional modifications such that Schotz’s system could process appropriately Rovira’s signal. See KSR, 550 U.S. at 421.” slip op. at 13

  Patent outcomesUS 6,757,913 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 6,757,913
• Fisher & Paykel Healthcare Limited v. Resmed LimitedSome claims unpatentable
  PTAB · Mar 7, 2018 · IPR2017-00059 · APJ James J Mayberry · IPR · Final written decision

  Claims 73–76, 78–82, and 84–86 are unpatentable under § 103; claims 23–72, 77, and 83 were not shown unpatentable because the proposed modification would change Ogden’s principle of operation.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “We find both parties assert very similar definitions of the level of ordinary skill in the art. Both definitions include a degreed engineer with two years of experience. Fisher identifies the fields of experience as “masks, respiratory therapy, patient interfaces or relevant product design experience” and ResMed, through Mr. Sleeper, defines the field of experience as “relevant product design experience.” Mr. Sleeper declares that additional experience may compensate for less education and additional education may compensate for less experience. We find, based on our review of the complete record, that the evidence of record supports a level of ordinary skill in the art consistent with the parties’ definitions—a person having a bachelor’s degree in mechanical engineering, biomedical engineering or other similar type of engineering degree combined with two years of experience in the field of masks, respiratory therapy, patient interfaces, or other relevant product design experience. We also find that additional experience may compensate for less education and additional education may compensate for less experience. Further, we note that our patentability analysis presented below would reach the same findings and determinations under either party’s definition of the level of ordinary skill in the art.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “ResMed takes the position that the plurality of tabs must form the snap-fit structure. See PO Resp. 27 (“Moreover, even if there was a ‘snap-fit,’ there would only be a snap-fit by a single tab (detent 43, illustrated below in Figure 1)—not the required plurality of tabs”); Tr. 35:7–9 (“The plurality of tabs are what need to have the snap-fit. And having one snap-fit for one tab is not enough to meet this claim language.”). As detailed below, we determine that the broadest reasonable construction of the disputed claim limitation encompasses a structure having a plurality of tabs, but the plurality of tabs not necessarily providing the snap-fit structure. That is, under the broadest reasonable construction, a single tab may provide the snap fit structure. First, the plain reading of claim 73 supports our construction. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“[T]he context in which a term is used in the [claim at issue] can be highly instructive.”). As a starting point, the plain meaning of the phrase “plurality of tabs” is two or more tabs and we discern nothing in the record to indicate a contrary meaning. See, e.g., Dayco Prod., Inc. v. Total Containment, Inc., 258 F.3d 1317, 1327–28 (Fed. Cir. 2001) (“[W]e have held that ‘plurality,’ when used in a claim, refers to two or more items, absent some indication to the contrary.”). The plain language of the claim also requires the two or more tabs be structured to attach removably the headgear connector to the rigid mask frame. The claim language further requires this removable attaching be with a snap-fit. The language of the claim, however, does not require two or more tabs be associated with the snap-fit. That is, nothing in the plain language of the claim element precludes a structure that includes two or more tabs interfacing with the rigid mask, where only one of the tabs is associated with snap-fit aspect of the interfacing.” slip op. at 13

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

    “What a reference teaches and how a proposed modification of a reference would change its principle of operation are underlying factual inquiries in an obviousness analysis. See, e.g., Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1046 (Fed. Cir. 2017) (addressing the Board’s factual findings with respect to a reference’s principle of operation). We find that Ogden’s principle of operation is to employ a rigid plate loosely mounted to a rigid shell, such that “in use, the rigid plate is free to move relative to the rigid shell in response to any unequal forces being applied to it by the side straps as the patient, for example, turns his or her head from side-to-side.” Ex. 1102, 1:57–61; see also PO Resp. 52–53, 61 (indicating that Ogden’s principle of operation is its loosely-mounted rigid plate). Ogden’s disclosure as a whole supports our finding as to its principle of operation. As Ogden discloses, the loose-fitted rigid plate “rotate[s] to compensate for any unequally applied forces as the patient moves his or her head.” Ex. 1102, 4:17–20. [W]hen the patient turns his or her head and instead of tending to lift the shell 3 and its seal 5 off the patient’s face and breaking the seal as in FIG. 4, the rigid plate 9 of the present invention in FIG. 5 rotates relative to the rigid shell 3. This movement then compensates or equalizes the forces and keeps the shell 3 securingly in place with the center lines 69 and 71 of the shell 3 and the patient’s face aligned. Id. at 4:31–38; see also 4:61–5:3 (describing how Ogden’s facial mask compensates for any unequal applied forces by the side straps through the operation of loosely-mounted rigid place 9); Fig. 4 (illustrating how the seal at a patient’s face is broken by side-to-side movement with a rigid plate fixedly mounted to a rigid shell); cf. id. at 1:16–20 (“[A] common problem often arises that the mask will tend to unseat and leak as the patient turns his or her head (e.g., from side-to-side) or rolls over in bed and the straps contact and are deflected by a pillow, blanket, or other object.”); PO Resp. 52 (describing the problem addressed by Ogden).” slip op. at 32

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “A reference may be said to teach away when a person of ordinary skill, upon reading the reference . . . would be led in a direction divergent from the path that was taken by the applicant.” In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999)); see, e.g., In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (holding that, to teach away, the prior art must “criticize, discredit, or otherwise discourage the solution claimed”). We find that Ogden’s disclosure fails to rise to the level of teaching away. Ogden provides a solution to a problem with fixed headgear connectors but does not criticize, discredit, or otherwise discourage fixed headgear connectors. Instead, Ogden illustrates that a specific prior art mask with a fixed headgear connector may result in leakage of supplied air to the mask and discloses an improvement to that specific mask. Ogden does not indicate that a fixed headgear connector renders a mask inoperable or otherwise indicates that a person having ordinary skill in the art would not consider a path that led to a mask with a fixed headgear connector. We also do not agree with ResMed’s characterization that Ogden expressly teaches away from the proposed combination. Ogden expressly teaches a solution, but does not expressly teach away from other solutions. We note that, “[w]here the prior art contains ‘apparently conflicting’ slip op. at 38

  Patent outcomesUS 8,960,196 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,960,196
• Google LLC v. Makor Issues & Rights Ltd.Some claims unpatentable
  PTAB · Feb 12, 2018 · IPR2016-01535 · APJ Robert L Kinder · IPR · Final written decision

  Claims 12–14 and 18 are unpatentable as obvious over Xu and Peterson; unpatentability was not shown for claims 15, 16, and 19.

  RulingsFinal written decision

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

    “We first examine the claim as a whole with a focus on the disputed language. The claim language itself requires “computing real time traffic jam identification.” Ex. 1001, 23:10 (emphasis added). By qualifying the claimed traffic jam as being determined in real time, and by also by using “sample vehicles to measure time delays,” a person of ordinary skill in the art would understand that traffic jams are more immediate, e.g., real time, than the regular, statistical, congestion described in the ’783 patent. See Ex. 2002 ¶ 7 (“[C]laim 12 further goes on to recite the computation of ‘traffic jams,’ by using ‘sample vehicles to measure time delays,’ which a person of ordinary skill in the art would understand must therefore be distinct from regular, statistical, congestion.”). The claim also requires “collecting GPS data and computing individual statistical travel time estimates (regular times) for predetermined roads.” Ex. 1001, 23:3–6; Tr. 27:16–29:17 (discussing the relevance of this limitation). Reading the claim as a whole suggests that a “traffic jam” must be a sudden unpredictable change of traffic on a segment as compared to these regular times. See Ex. 2002 ¶ 7.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art 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). In that regard, Petitioner’s expert, Dr. Braasch, testifies that:” slip op. at 18

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

    “Based on the final record, Petitioner has not provided sufficient arguments or credible evidence establishing how TravTek teaches the traffic jam limitation. Specifically, Petitioner has not persuasively shown how TravTek teaches the use of measured time delays of sample vehicles for computing a real time traffic jam. As explained above, we construed the term “traffic jam” to mean “a sudden unpredictable change of traffic in a segment as compared to regular times, i.e., individual statistical travel time estimates,” and thus the claimed “measuring time delays” must also be in relation to regular times. Claim 12 also requires that traffic jam identification is determined “by utilizing the sample vehicles for measuring time delays.” Petitioner has not directed us to record evidence sufficient to show that TravTek teaches these limitations.” slip op. at 24

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “First, we are not persuaded by Patent Owner’s argument that Xu only uses information from third party, or other external, sources to identify current traffic conditions. Patent Owner’s argument narrowly focuses on one example described in Xu, and fails to consider Xu as a whole, from the perspective of an ordinarily skilled artisan. A prior art reference must be considered for everything it teaches by way of technology and is not limited to the particular example it is describing. EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985). Furthermore, in an obviousness analysis, we must consider the combination of references, as a whole, in light of the general knowledge of an ordinarily skilled artisan. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). One stated objective of Xu is to create “a method for collecting dynamic traffic data using equipment installed in vehicles” as opposed to just relying on the prior art “methods for collecting traffic data” such as “sensing systems” that “are installed along highways,” using “[v]ideo cameras” or “pulsed laser range image technology.” Ex. 1006, 3:23–48. Given that a purpose of Xu was to use dynamic traffic data obtained from GPS receivers installed in vehicles, Xu, as a whole, provides a basis for using that same dynamic traffic data for determination of real time traffic conditions as testified by Dr. Braasch. Id.; see also id. at 2:63–67, 4:17–22; Ex. 1026 ¶ 36. For example, Xu explains how current traffic conditions may impact traffic forecasts and “the [TSC] receives a plurality of traffic data indicating that the link is experiencing an unusual congestion, by comparing the current traffic status with the normal traffic condition.” Id. at 12:66–13:6 (emphasis added); Ex. 1026 ¶ 36. Based on the final record, Petitioner establishes that the “plurality of traffic data” would include dynamic vehicle position data and that “time delays” are determined by comparing the current traffic status as determined by vehicle position with the normal traffic condition. Ex. 1006, 13:2–5 (“comparing the current traffic status with the normal traffic condition”); see also Pet. 68; Ex. 1003 ¶¶ 145–46; Ex. 1026 ¶¶ 32–40. Indeed, as Dr. Braasch testifies, vehicle position data would be a source of real time traffic conditions indicative of unusual congestion. See Ex. 1026 ¶ 36; Ex. 1006, 12:66–13:6; Tr. 33:7–34:8 (citing Ex. 1006, 12:54–65). We are also persuaded by Petitioner’s argument that Xu’s “communication system ‘forwards road traffic data reported from all vehicles 20 . . . to the traffic service center’ and that this data is used to provide ‘an optimum travel route based on real-time traffic conditions.’” Pet. Reply 17 (citing Ex. 1006, 7:37–52; 8:26–36; 12:66–13:6). Also persuasive is the cross-examination testimony of Dr. Kurzhanskiy that “one of the plurality of traffic data that could be being [sic] used to detect unusual congestion is vehicle probe position data.” Pet. Reply 17 (quoting Ex. 1024, 82:19–83:7) (also agreeing “that Xu discloses that vehicle position data is a form of traffic data that the system collects”). For these reasons, we are not persuaded by Patent Owner’s argument that Xu fails to disclose the traffic jam limitation.” slip op. at 36

  Patent outcomesUS 6,480,783 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,480,783
• Pacific Surf Designs, Inc. v. Surf Waves, Ltd.Some claims unpatentable
  PTAB · Jan 17, 2018 · IPR2016-01454 · APJ Jason W Melvin · IPR · Final written decision

  Claims 1–5 and 7–20 are unpatentable; claim 6 was not shown unpatentable, based on the anticipation and obviousness grounds summarized by the Board.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “Although the district court construed “activity section” as Petitioner describes, it also construed “curved sidewall extending substantially upwardly from [an/another] edge of the middle section,” which is part of the activity section, as “upwardly curved wall that the rider may traverse extending from [an/another] edge of the middle section.” Ex. 1013, 12–14. That said, it does not appear that the district court specifically considered whether to include “that the rider may traverse” in its construction. Id. It did, however, identify the issue regarding “activity section” as whether that term should include Petitioner/Defendant’s “additional proposed phrase ‘on 6 At the hearing, Patent Owner argued that the Lochtefeld 530 lacks the claimed sidewall because: the sidewall is “not to be designed [to be traversed]. But more than designed, there’s nothing in this reference that tells you that you should be traversing on it. So it’s more than just designed. There’s nothing in this reference that says you would traverse it.” Tr. 34:15–22. all of which a rider can ride.’” Ex. 1013, 10:1–4. It concluded that such language would be “superfluous and introduce[] ambiguity.” Id. at 10:9–12. We conclude the broadest-reasonable interpretation of “activity section” in light of the Specification does not require that a rider may traverse the entire activity section, including all portions of the sidewalls. Such a construction would be inconsistent with the Specification’s description that sidewalls may curve past vertical, as shown in Figure 12C. Ex. 1002, 4:5–6, Fig. 12C. In this regard, our construction comports with that of the district court. See Ex. 1013, 10:9–12. Beyond that, as discussed below (see infra at 41), whether the claims require that a rider may traverse some portion of the sidewall does not affect our conclusions regarding unpatentability. Thus, we do not further construe the “activity section.”” slip op. at 11

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

    “Regarding the claim phrase “extending substantially upwardly,” Patent Owner’s expert takes the position that curvature must be measured “perpendicular to a tangent along the edge.” See Ex. 1014, 59:3–60:1. Patent Owner relies on its expert to argue that Lochtefeld 589 does not disclose the claimed sidewalls but provides no support for construing “extending substantially upwardly” in such a manner. Patent Owner’s expert does not provide any support for such a construction in his declaration. Instead, he asserts that Lochtefeld 589 discloses sidewalls that extend either downward or horizontally, without explaining how he comes to that conclusion. Ex. 2001 ¶ 23. We will not impose a limiting construction based solely on an expert’s unsupported statements. Without some reason to construe “extending substantially upwardly” as sought by Patent Owner, we consider the ordinary meaning of the phrase within the context of the claims and Specification. The Specification gives a very permissive and general description of the sidewalls. E.g., Ex. 1001, 3:15–22, 3:56–4:6. Thus, the Specification leads us to construe “extending substantially upwardly” as encompassing a sidewall that, at some point, extends above the edge of middle section corresponding to the side wall.” slip op. at 13

  • Prior constructionTerm construed petitioner constructionDecided for petitioner

    “3. “the first curved side” All claims recite that the “second curved sidewall” is opposite “the first curved side.” Although the claims do not provide antecedent basis for “the first curved side,” Petitioner proposes that the term be construed as “the first curved sidewall.” Pet. 20. Petitioner notes that Patent Owner argued in the related district court proceeding that “[i]t is beyond dispute that the claim term ‘the first curved side’ was intended to be ‘the first curved sidewall,’ both to comport with all of the disclosures of the ’016 Patent and also in accordance with proper antecedent basis.” Id. (citing Ex. 1010, 28:13–18). Patent Owner does not address this issue. A district court may “correct an error in a patent by interpretation of the patent where no certificate of correction has been issued . . . only if (1) the correction is not subject to reasonable debate based on consideration of the claim language and the specification and (2) the prosecution history does not suggest a different interpretation of the claims.” Novo Indus., LP v. Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003). We have applied this same standard in our proceedings. E.g., Apple Inc. v. Achates Reference Publ’g, Inc., Case IPR2013-00080, slip op at 10–12 (PTAB June 3, 2013) (Paper 22). Here, we conclude the claims are properly read such that “first curved side” refers to the “first curved sidewall” and that such correction is not subject to reasonable debate. Neither party has identified how the prosecution history suggests a different interpretation. Thus, we adopt Petitioner’s proposed construction, namely “first curved sidewall.”” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “1. The level of ordinary skill in the art Petitioner asserts that the applicable person of ordinary skill in the art is “a person with skill in designing, manufacturing, or refurbishing surfing simulation water rides.” Pet. 17. Petitioner’s expert declarant applies that definition in his analysis. Ex. 1002 ¶ 17. We adopted that definition in our institution decision and noted that the teachings of the prior art presented in the Petition reflect that level of skill. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Inst. 19. Patent Owner does not challenge Petitioner’s definition of the level of ordinary skill in the art, and we also adopt it here.” slip op. at 30

  Patent outcomesUS 8,088,016 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 8,088,016
• Avx Corporation v. Presidio Components, Inc.Some claims unpatentable
  PTAB · Aug 21, 2017 · IPR2016-00636 · APJ Kimberly Mcgraw · IPR · Final written decision

  Claims 13–16 and 18 are unpatentable under §103; claims 1–12, 17, and 19–21 were not shown unpatentable because the asserted combinations relying on Liebowitz and Devoe lacked sufficient motivation to combine.

  RulingsFinal written decision

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

    “Liebowitz discloses a “high inductance drawback” to buried metallizations and vias, and expressly states that its invention is designed to “avoid[] any of these inductance-increasing methods.” Ex. 1004, 1:40–53; see also Ex. 2009, 113 (prosecution history of the ’639 patent, where the applicants distinguished Devoe by arguing that “the present invention recognizes that buried multi-layered structures can be used to make capacitors using vias and edge connections” and “it is this very construction that the present inventor seeks to avoid” (emphases omitted)). Indeed, Dr. Chung in her declaration filed in support of the Petition expressly recognized the high inductance drawback mentioned in Liebowitz. Ex. 1003 ¶ 49. Yet Petitioner’s proposed combination is based on a POSITA looking to Devoe to incorporate the very feature that Liebowitz states should be avoided. Petitioner and Dr. Chung do not account sufficiently for this express disclosure in Liebowitz. Instead, Dr. Chung testifies that a skilled artisan would have understood that the benefits of increased capacitance “may outweigh any negative impacts of an increase in inductance” because “the inductance concerns raised in Liebowitz are not always applicable.” Ex. 1003 ¶ 49 (emphasis added). Dr. Chung concludes that a skilled artisan would have combined the buried metallizations and vias of Devoe with the capacitor of Liebowitz “when increasing capacitance is of greater concern than lowering inductance.” Id. However, Petitioner does not provide sufficient explanation or credible evidence to explain when or under what circumstances increasing capacitance would have been of greater concern than lowering capacitance, or sufficient evidence to show that a skilled artisan would have understood that the benefits of increased capacitance would have outweighed the negative effects of high inductance. In particular, Dr. Chung’s unsupported and equivocal testimony that increased capacitance “may” outweigh increased inductance is insufficient for Petitioner to meet its burden.11 See id.” slip op. at 24

  • Skill levelSkill level patent owner adoptedPetitioner expert creditedDecided for patent owner

    “We disagree with Patent Owner’s contention that a declarant must actually be a person of ordinary skill in the art in order to present testimony as to what a person of ordinary skill in the art would have understood at the time of the invention. See, e.g., SEB S.A. v. Montgomery Ward & Co. Inc., 594 F.3d 1360, 1373 (Fed. Cir. 2010) (stating there is no requirement of a 9 Patent Owner further contends Petitioner admitted that it was “required to present the opinions of a person of ordinary skill in the art . . . at the time of the invention of the ’639 patent.” PO Resp. 20 (citing Ex. 1003 ¶ 15). We have reviewed the cited material and find Petitioner did not make any such admission. perfect match between an expert’s experience and the field of the art in question, provided the expert has “sufficient relevant technical experience” to testify). The Federal Circuit has explained that a person of ordinary skill in the art is a “hypothetical person postulated by § 103” that is “presumed to have . . . knowledge of all material prior art.” Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1452–53 (Fed. Cir. 1984); see also id. at 1454 (“It should be clear that that hypothetical person [of ordinary skill in the art] is not the inventor, but an imaginary being possessing ‘ordinary skill in the art’ created by Congress to provide a standard of patentability . . . .”). Thus, the proper question to ask is not whether the testifying witness is in fact such a “hypothetical person,” but rather whether the testifying witness possesses sufficient qualifications to be able to testify as to what the hypothetical person of ordinary skill in the art postulated by § 103 would have known and understood at the time of the invention. Although Dr. Chung may not have “industry” experience (Ex. 1016 ¶ 65), we find that Dr. Chung possesses sufficient education, training, and experience to provide testimony as to what a POSITA would have understood at the time of the invention, under either party’s proffered definition. See, e.g., Ex. 1011, 1–34; Ex. 1003 ¶¶ 2–5; Ex. 1016 ¶¶ 63–65 (describing Dr. Chung’s experience). For example, Dr. Chung has both a master’s degree and a doctorate in Materials Science from the Massachusetts Institute of Technology. Ex. 1003 ¶ 3. Dr. Chung has been active in capacitor research for at least 16 years, including experience in the design of single-layer capacitors, as evidenced by numerous publications. Ex. 1011; Ex. 1016 ¶¶ 64, 65. Additionally, Dr. Chung is the Founding Director of the Composite Materials Research Laboratory at the University of Buffalo, is a professor, and has taught classes in Materials Science, including teaching concepts in the design of single layer capacitors to her students. See, e.g., Ex. 1003 ¶¶ 4–5; Ex. 1016 ¶ 64. We further note that Dr. Chung is the author of Yih (Ex. 1012), which is one of the prior art references that is asserted in this proceeding. Certainly, the prior art of record in this proceeding—namely, Liebowitz, Devoe, Veater, SinghDeo, Insetta, and Yih —is indicative of the level of ordinary skill in the art. See Okajima, 261 F.3d at 1355; GPAC Inc., 57 F.3d at 1579. Moreover, to the extent Dr. Chung is less familiar with aspects” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We disagree with Patent Owner’s contention that a declarant must actually be a person of ordinary skill in the art in order to present testimony as to what a person of ordinary skill in the art would have understood at the time of the invention. See, e.g., SEB S.A. v. Montgomery Ward & Co. Inc., 594 F.3d 1360, 1373 (Fed. Cir. 2010) (stating there is no requirement of a 9 Patent Owner further contends Petitioner admitted that it was “required to present the opinions of a person of ordinary skill in the art . . . at the time of the invention of the ’639 patent.” PO Resp. 20 (citing Ex. 1003 ¶ 15). We have reviewed the cited material and find Petitioner did not make any such admission. perfect match between an expert’s experience and the field of the art in question, provided the expert has “sufficient relevant technical experience” to testify). The Federal Circuit has explained that a person of ordinary skill in the art is a “hypothetical person postulated by § 103” that is “presumed to have . . . knowledge of all material prior art.” Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1452–53 (Fed. Cir. 1984); see also id. at 1454 (“It should be clear that that hypothetical person [of ordinary skill in the art] is not the inventor, but an imaginary being possessing ‘ordinary skill in the art’ created by Congress to provide a standard of patentability . . . .”). Thus, the proper question to ask is not whether the testifying witness is in fact such a “hypothetical person,” but rather whether the testifying witness possesses sufficient qualifications to be able to testify as to what the hypothetical person of ordinary skill in the art postulated by § 103 would have known and understood at the time of the invention. Although Dr. Chung may not have “industry” experience (Ex. 1016 ¶ 65), we find that Dr. Chung possesses sufficient education, training, and experience to provide testimony as to what a POSITA would have understood at the time of the invention, under either party’s proffered definition. See, e.g., Ex. 1011, 1–34; Ex. 1003 ¶¶ 2–5; Ex. 1016 ¶¶ 63–65 (describing Dr. Chung’s experience). For example, Dr. Chung has both a master’s degree and a doctorate in Materials Science from the Massachusetts Institute of Technology. Ex. 1003 ¶ 3. Dr. Chung has been active in capacitor research for at least 16 years, including experience in the design of single-layer capacitors, as evidenced by numerous publications. Ex. 1011; Ex. 1016 ¶¶ 64, 65. Additionally, Dr. Chung is the Founding Director of the Composite Materials Research Laboratory at the University of Buffalo, is a” slip op. at 11

  • Prior constructionPrior construction adoptedDecided for patent owner

    “In our Decision on Institution, we construed “essentially monolithic structure” in claims 1 and 8 to mean “an essentially solid structure of materials that are sintered together” and that has “internal metallizations that create a partial boundary or seam within the structure, but because the metallizations do not cover the entire area of the dielectric layer, the ceramic materials sinter together around the edges of the metallization.” Dec. on Inst. 8–12. We disagreed with Petitioner’s argument that “essentially monolithic structure” should be interpreted broadly “to incorporate the elimination of any or all ‘boundaries/joints’ within a structure.” Id. (citing Pet. 6). Rather, we determined that the ’639 patent distinguished between a “monolithic structure,” which lacks any boundary or seam, and an “essentially monolithic structure” that possesses a partial boundary or seam. Id. at 10 (citing Ex. 1001, 5:3–19). The parties do not dispute our interpretation in their Patent Owner Response and Reply. Moreover, in consideration of the arguments and evidence developed during trial, we do not perceive any reason or evidence that compels any deviation from this interpretation. Accordingly, we adopt our previous analysis and claim interpretation of “essentially monolithic structure” for purposes of this Decision. Id. at 8–12. We further determine that for the purposes of this Decision, no other claim terms require construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (stating “only those terms need be construed that in controversy and only to the extent necessary to resolve the controversy”).” slip op. at 15

  Patent outcomesUS 6,661,639 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,661,639
• Spectrum Brands, Inc. / Unikey Technologies, Inc. v. Assa Abloy ABSome claims unpatentable
  PTAB · Jan 12, 2017 · IPR2016-00686 · APJ Christopher G Paulraj · IPR · Final written decision

  Claims 1, 3, 5, 9–16, 22, 23, 26, 29, and 30 are unpatentable over Nielsen; claims 7 and 21 were not shown unpatentable over Nielsen and Karkas for lack of a sufficient reason to combine.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “Id. ¶ 84. Dr. Villasenor, however, does not cite to any underlying technical documents that may have corroborated Mr. Lovelock’s explanation about how the Seos platform operates; nor has Dr. Villasenor mapped Mr. Lovelock’s explanation to specific claim elements. Also, Mr. Lovelock himself has not submitted a declaration in this proceeding. We, thus, give Dr. Villasenor’s opinion that Patent Owner’s Seos platform practices the claims little weight. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Further, we recognize that Dr. Villasenor’s testimony is the only evidence of record on this issue, as Petitioners have not submitted a rebuttal declaration attesting that Patent Owner’s products do not practice the claims.” slip op. at 37

  • ExcludeMotion to exclude, deniedMixed

    “between the commercial success of the Seos product and the claims of the ’374 patent.” Mot. to Exclude 8. Patent Owner argues that “the quoted passage is not relevant because it is removed by 10 years from the commercial success events Dr. Villasenor addressed,” and “bears no relationship to, and does not serve to prove, disprove or rebut the nexus between the commercial success of the Seos product in the hospitality or enterprise industries and the claimed credential updating features embodied in the Seos system.” Id. at 9. We disagree. As discussed above, we find that the quoted passage of the Annual Report statement is evidence of Patent Owner’s pre-existing market share, and, thus, relevant to the issue of whether the alleged commercial success has a nexus to the claimed invention. We have taken into account the fact that the 2004 Annual Report is from over 10 years ago, and do not find that it will cause any confusion. To the contrary, the 2004 Annual Report is more probative to the issue of pre-existing market share than more recent reports insofar as the ’374 patent claims an effective filing date based on a provisional application filed in April 2005. Ex. 1001, Title Page. Accordingly, we determine that Exhibit 1008 is admissible evidence under Rules 402 and 403, and we deny Patent Owner’s Motion to Exclude as to that exhibit. IV.” slip op. at 44

  • Skill levelSkill level board ownOther

    “We agree with Dr. Villasenor insofar as the relevant field for the ’374 patent is more accurately defined as “electronic control access systems” rather than merely “security systems” (id. ¶ 41), but otherwise find no meaningful difference between the level of ordinary skill in the art proposed by the parties’ experts. We also recognize that the level of skill in the art is reflected in the prior art references themselves, which focus on mobile-phone based electronic access systems, and take that into consideration in our analysis. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). As such, we determine that a person of ordinary skill in the art would have least an undergraduate degree in computer science or electrical engineering and one year of experience in electronic control access systems.” slip op. at 15

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “We determine, for purpose of this Final Written Decision, that no terms in the challenged claims require express construction. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent 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 11

  Patent outcomesUS 8,150,374 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,150,374
• Spectrum Brands, Inc. / Unikey Technologies, Inc. v. Assa Abloy ABSome claims unpatentable
  PTAB · Jan 12, 2017 · IPR2015-01562 · APJ Christopher G Paulraj · IPR · Final written decision

  Claims 1, 3, 5, 9–16, 22, 23, 26, 29, and 30 are unpatentable as obvious over Nielsen; claims 7 and 21 were not shown unpatentable over Nielsen and Karkas.

  RulingsFinal written decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “separate Petition for inter partes review, challenging claims 1, 3, 5, 7, 9–16, 21–23, 26, 29, and 30 of the ’374 patent based on similar grounds to those presented by Spectrum. See IPR2016-00686, Paper 2. We instituted inter partes review based on UniKey’s Petition to the extent that the grounds set forth therein are consistent with the basis for our institution of this proceeding, and joined UniKey as a Petitioner to this proceeding. See Paper 29 (instituting inter partes review based on UniKey’s Petition and joining UniKey as a Petitioner to IPR2015-01562). As a condition of UniKey’s joinder, the parties submitted a joint stipulation setting forth the parameters of UniKey’s participation in this proceeding, including the requirement that “UniKey will not have any right to separate or additional briefing, discovery, or speaking time for the duration of the contest involving [the ’374 patent], through termination of the joined proceedings and through any related appeal.” Paper 27, 1. UniKey also filed a statement “withdraw[ing] all grounds and arguments presented in IPR2016-00686 to the extent that they differ from the Panel’s ground for institution in IPR2015-01562.” Paper 32.2” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “the Specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2146 (2016). Under the broadest reasonable construction standard, claim terms are presumed to have their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). “Absent claim language carrying a narrow meaning, the PTO should only limit the claim based on the specification . . . when [it] expressly disclaim[s] the broader definition.” In re Bigio, 381 F.3d 1320, 1325 (Fed Cir. 2004). “Although an inventor is indeed free to define the specific terms used to describe his or her invention, this must be done with reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We determine, for purpose of this Final Written Decision, that no terms in the challenged claims require express construction. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent 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 11

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree with Dr. Villasenor insofar as the relevant field for the ’374 patent is more accurately defined as “electronic control access systems” rather than merely “security systems” (id. ¶ 41), but otherwise find no meaningful difference between the level of ordinary skill in the art proposed by the parties’ experts. We also recognize that the level of skill in the art is reflected in the prior art references themselves, which focus on mobile-phone based electronic access systems, and take that into consideration in our analysis. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). As such, we determine that a person of ordinary skill in the art would have least an undergraduate degree in computer science or electrical engineering and one year of experience in electronic control access systems.” slip op. at 15

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “step 1a. As recognized by Petitioners, the Federal Circuit has observed that “[u]nless the steps of a method actually recite an order, the steps are not ordinarily construed to require one.” Reply 10–11 (quoting Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003)). In this case, however, the plain language of claim 1 requires “storing . . . a first set of credential data,” “receiving . . . a credential update,” and “in response to receiving the credential update, . . . replacing the first set of credential data with a second set of credential data that is different from the first set of credential data.” Ex. 1001, 12:35–45. Thus, we agree that “[l]ogic compels the conclusion that step 1b follows step 1a, because the controller’s receipt of a ‘credential update’ associated with ‘different’ data would follow the first set of credential data previously stored at the controller.” PO Resp. 21. See Mformation Techs., Inc. v. Research In Motion Ltd., 764 F.3d 1392, 1398–99 (Fed. Cir. 2014) (“[A] claim requires an ordering of steps when the claim language, as a matter of logic or grammar, requires that the steps be performed in the order written, or the specification directly or implicitly requires an order of steps.” (internal quotation marks omitted)). With reference to Figure 3, Nielsen teaches that “[i]n the initial step 381, the access right owner 352 defines the access rights to be granted, possibly including a list of possible access right grantees,” that “[i]n step 382, the access right owner 352 authorizes the administrator 351 to generate and assign access keys,” that “[b]y means of an access code management system, the administrator in step 383 transforms the access right definition into a set of electronic access codes,” and that “[i]n step 384, the access codes and other related data are stored.” Ex. 1002 ¶ 132. Thus, we agree with Patent Owner that “the relied upon steps of Nielsen teach a process that differs from the steps recited in claim 1” insofar as Figure 3 shows the “receiving” step(s) performed before the “storing” step 384. PO Resp. 25. Specifically, that Figure 3 of Nielsen does not show that the process is iterative. Nonetheless, we find that Nielsen suggests a process wherein access codes (i.e., “credential data”) that are stored in the access code management system are periodically replaced with new and different access codes (i.e., a “credential update”). See Ex. 1002 ¶ 128 (“[T]he access code may be transmitted periodically, in order to replace the access codes on a lock control unit and the corresponding electronic key . . . .”). The same paragraph of Nielsen also indicates that “[t]he access code management system 211 generates and administers the access codes as described in connection with FIGS. 3 and 9a-b.” Id. Thus, we determine that the skilled artisan would have found it obvious to initially store access codes, and thereafter repeat the process described in the flow chart of Figure 3 in order to replace previously stored access codes. As explained by Dr. Green, the purpose of Nielsen periodically replacing previous access codes “is to improve the security of the system,” such as in the situation when codes are invalidated if misused or lost. See Ex. 1004 ¶ 29. Nielsen explicitly references Figure 3 when referencing how the access code management system administers access codes (Ex. 1002 ¶ 128), thereby providing a suggestion and motivation to modify Nielsen’s teachings so as to repeat the process of Figure 3 when replacing previously stored access codes in order to improve security.” slip op. at 18

  Patent outcomesUS 8,150,374 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,150,374

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.