• Packers Plus Energy Services Inc. / Packers Plus Energy Services (USA) Inc. v. Baker Hughes Oilfield Operations, LLCAll claims unpatentable
  PTAB · Nov 5, 2019 · IPR2018-01030 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 1, 5, 6, and 10–13 are unpatentable, principally because King’s second embodiment anticipates them; the contingent motion to amend is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “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). Petitioner contends, relying on the testimony of Mr. Gonzalez, that a person of ordinary skill in the art would have had a bachelor’s degree in petroleum or mechanical engineering, or other science or technical degree applicable in the oil and gas industry, and at least three years of experience in drilling and completions of oil and gas wells, including experience in well fracturing simulations. Pet. 23 (citing Ex. 1025 ¶¶ 41–43). Petitioner further contends that the artisan’s level of education necessary may increase or decrease depending on years of experience, and conversely the years of experience may increase or decrease depending on level of education. Id. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill or propose an alternative. PO Resp. 4. On the record before us, we are persuaded to adopt Mr. Gonzalez’s assessment of a person with ordinary skill in the art because it is consistent with the problems and solutions in the prior art of record. We further find that the prior art of record in the instant proceeding reflects the appropriate level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (“the prior art itself reflects an appropriate level” of ordinary skill in the art).” slip op. at 8

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

    “In applying a broadest reasonable construction, 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). Additionally, we must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “We start with whether “profile” is limited to a feature or element that makes contact with the ball. We agree with Petitioner that “profile” is not limited to features that make contact. Claim 1 recites “a profile disposed at the second portion configured to increase resistance to extrusion of a runnable member past the pluggable seat in comparison to the same pluggable seat without the profile.” Ex. 1001, 4:7–10 (emphasis added). Claim 11 recites a profile disposed at a second portion of the seat having a second diameter that is smaller than the first diameter and positioned downstream of the first portion, downstream being defined as a direction that the ball is moved into seating engagement with the seat, the profile being configured to require greater pressure required to extrude the ball past the first portion. Ex. 1001, 4:41–47. Consistent with Petitioner’s proposed construction (Pet. 22; Ex. 1025 ¶ 48), and contrary to Patent Owner’s contentions and the testimony of Mr. Watson (see, e.g., PO Resp. 14–16; Ex. 2010 ¶ 45), claims 1 and 11 recite that the “profile” is configured “to increase resistance” and “to require greater pressure,” respectively. Ex. 1001, 4:7–10, 4:41–47. Claims 1 and 11 also include recitations relating to seating, such as “seatable thereagainst” and “seating engagement,” but these recitations pertain to “a first portion” and defining the position of “a second portion,” i.e., “downstream,” respectively. Id. at 3:57, 4:3, 4:44. No similar terms are recited with respect to “profile.” Id. at 3:55–4:10, 4:33–47.” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Regarding the first of Patent Owner’s assertions, consistent with Petitioner’s contentions and the testimony of Mr. Gonzalez and contrary to Patent Owner’s assertion and the testimony of Mr. Watson, Haugen describes an apparatus and method of operation for the release of concentric tubing strings used in well operations. Ex. 1003, at code (57). We agree with Petitioner that the ’829 Patent Specification does not limit the field of endeavor to “fracturing” or “sliding sleeves” and claim 1 does not recite that the “frustoconical surface” of the first portion prevents extrusion. Pet. Reply 17. Indeed, the ’829 Patent describes the field broadly as “industries concerned with earth formation boreholes, such as hydrocarbon recovery and gas sequestration.” Ex. 1001, 1:6–7. “When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” KSR at 417.” slip op. at 35

  Patent outcomesUS 8,365,829 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,365,829
• Expedia, Inc. / Homeaway.Com, Inc. et al. v. International Business Machines CorporationRehearing denied
  PTAB · Jun 5, 2019 · IPR2018-01685 · APJ Beverly M Bunting · IPR · Rehearing

  The Board denied the petitioner’s rehearing request, leaving in place the denial of institution because the petition did not persuasively map Barriga-Caceres to the construed federated-environment limitation.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “decision for an abuse of discretion. 37 C.F.R. § 42.71(c). On rehearing, the burden of showing that the Decision should be modified lies with the party challenging the Decision, in this case, Petitioner. 37 C.F.R. § 42.71(d). A request for rehearing must identify specifically all matters the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). Petitioner’s stated basis for rehearing is that we “misapprehended or overlooked that Barriga-Caceres’s disclosure would” slip op. at 2

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

    “and Orbitz, LLC (collectively “Petitioner”) filed a Petition (Paper 1, “Pet.”) to institute an inter partes review of claims 1–2, 4–11, and 15–20 (“the challenged claims”) of U.S. Patent No. 7,631,346 (Ex. 1001, “the ’346 patent”). International Business Machines Corp. (“Patent Owner”) filed a Preliminary Response (Paper 8, “Prelim. Resp.”). On April 11, 2019, we entered a Decision on Institution (Paper 10, “Decision” or “Dec.”) in this proceeding, determining that Petitioner had not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim of the ’346 patent on any of the asserted grounds. Dec. 22. Petitioner timely filed this Request for Rehearing of the Decision. Paper 11 (“Request” or “Req. Reh’g.”).” slip op. at 2

  • BurdenDecided for patent owner

    “(“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”). However, as the Supreme Court has counseled, “the statute envisions that a petitioner will seek an inter partes review of a particular kind—one guided by a petition describing ‘each claim challenged’ and ‘the grounds on which the challenge to each claim is based.’ [35 U.S.C.] § 312(a)(3). From the outset, we see that Congress chose to structure a process in which it’s the petitioner, not the Director, who gets to define the contours of the proceeding.” SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1355, 200 L. Ed. 2d 695 (2018). Although we are sympathetic to the timing of the Federal Circuit’s construction, Petitioner does not argue persuasively, or provide authority to the effect, that we should reformulate the Petition to fit this claim construction. The additional explanation Petitioner now offers, as discussed below, concerning how the teachings of Barriga-Caceres are mapped to the “federated computing environment” limitation using the claim construction from the Federal Circuit, was not presented in the Petition, and Petitioner did not attempt to make it available to us before our statutory deadline. That is, we could not have misapprehended or overlooked arguments and evidence not presented in a cohesive manner in the Petition.” slip op. at 6

  None
  Patents in suitUS 7,631,346
• Expedia, Inc. / Homeaway.Com, Inc. et al. v. International Business Machines CorporationRehearing denied
  PTAB · Feb 6, 2019 · IPR2018-01134 · APJ David C Mckone · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, finding no overlooked or misapprehended arguments and no abuse of discretion in instituting review over the challenged claims.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burden of showing that the Decision should be modified is on Patent Owner, the party challenging the Institution Decision. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 3

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for patent owner

    “factor, where the petitioner had the benefit of materials from a previous proceeding.” Req. 12. The third General Plastic factor asks us to consider “whether at the time of filing of the second petition the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition.” General Plastic, Case IPR2016-01357, slip op. at 16. The General Plastic panel was “concerned here by the shifts in the prior art asserted and the related arguments in follow-on petitions.” Id. at 17. We fully considered the third General Plastic factor in our Institution Decision. Dec. 41–42. There, we explained that the extent of the guidance provided by the ’605 DDI was that the ’605 IPR petitioner failed to introduce meaningful argument or expert testimony to explain adequately (and allow the panel to evaluate) the relevance of Unleashed. Id. Thus, the extent of any roadmap given to Petitioner was that it ought to provide meaningful explanation and expert testimony in the petition itself to allow us to evaluate the relevance of Unleashed. Id. We found this to be entitled to less weight than a situation in which a petitioner changes its argument in response to the Board rejecting its argument in a previous case, or supplements its presentation of evidence in response to the Board finding a deficiency with a reference it presented in the previous case. Id. at 42.” slip op. at 6

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner

    “slip op.] at 15 (‘There is no per se rule precluding the filing of follow-on petitions.’).” Trial Practice Guide Update 10 (Aug. 2018) <https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_ Practice_Guide.pdf>. Indeed, as explained in the Institution Decision, Petitioner presented a strong case as to the merits. Dec. 24–35. This is an additional factor weighing against denial. Trial Practice Guide Update 10. We also weighed Patent Owner’s arguments in the context of the factors set forth in Becton, Dickenson, and concluded that, when considered together, those factors weighed against exercising our discretion under § 325(d). Dec. 37–40. In sum, we understood and fully considered Patent Owner’s arguments regarding General Plastic’s third factor, gave those arguments the weight they were due, and weighed the third factor along with the remaining factors outlined in General Plastic. We concluded that, when considered together, the factors weighed against exercising our discretion under § 314(a). We reached a similar conclusion upon considering factors relevant to our discretion under § 325(d). Patent Owner might disagree with our weighting of its arguments, but Patent Owner has not shown that we misapprehended or overlooked them, or that we were unreasonable in weighing those arguments in the context of all the factors.” slip op. at 7

  Discretionary denial
  Patents in suitUS 5,961,601
• Abs Global, Inc. v. Cytonome/St, LLCRehearing denied
  PTAB · Dec 14, 2018 · IPR2017-02163 · APJ Timothy J Goodson · IPR · Rehearing

  The Board denied ABS Global’s rehearing request, leaving in place its denial of institution because the Petition did not show that Weigl teaches the claimed focusing regions.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. LEGAL STANDARD In a request for rehearing, “[t]he burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). Further, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2

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

    “our Decision Denying Institution (Paper 11, “Decision” or “Dec.”). In that Decision, we concluded that Petitioner did not show a reasonable likelihood of prevailing in showing that any of the challenged claims of U.S. Patent No. 7,311,476 B2 (“the ’476 patent”) are unpatentable on any of the asserted grounds. See Dec. 22–27. Petitioner requests rehearing, arguing that we misapprehended or overlooked disclosures in Weigl,1 which was the primary reference Petitioner relied on in the asserted grounds. See Req. Reh’g 1. For the reasons set forth below, Petitioner’s request for rehearing is denied.” slip op. at 2

  • BurdenDecided for patent owner

    “helpful context, but in analyzing whether a petitioner has shown that the cited reference teaches a particular limitation, we look primarily to the section of the petition presenting arguments regarding that limitation. This flows from “the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim,’” Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)), as well as the requirement that “the Board must base its decision on arguments that were advanced by a party, and to which the opposing party was given a chance to respond.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016). See also Sirona Dental Systems GmbH v. Institut Straumann AG, 892 F.3d 1349, 1356 (Fed. Cir. 2018) (“It would . . . not be proper for the Board to deviate from the grounds in the petition and raise its own obviousness theory. . . .”). Here, the Request does not point to, and we do not find, any discussion of a constant-depth configuration in Weigl, in the Petition’s arguments regarding the “primary focusing region” and “secondary focusing region” limitations. See Pet. 39–44. Instead, as noted above, the Petition’s annotated drawings illustrating its contentions regarding these limitations show channel depth increasing, and the center fluid maintaining its dimensions as it flows downstream. The Request also argues that, leaving aside the constant-depth configuration, even a channel with increased depth would still serve to accelerate and narrow the center fluid. Req. 7–10. But here again, Petitioner did not present any such argument in the portion of its Petition arguing the “primary focusing region” and “secondary focusing region” limitations. See Pet. 39–44. The Request points to the summary of Weigl in the “Background of the Technology” section of the Petition. Req. 7–10 (citing Pet. 10–11). As such, we are not persuaded that our Decision overlooked or misapprehended Petitioner’s arguments regarding the “primary focusing region” and “secondary focusing region” limitations.” slip op. at 3

  None
  Patents in suitUS 7,311,476
• 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
• Google LLC v. Makor Issues & Rights Ltd.All claims unpatentable
  PTAB · Aug 9, 2018 · IPR2017-00816 · APJ Robert L Kinder · IPR · Final written decision

  Claims 4 and 6 are unpatentable over Xu, Vemuri, and Peterson; the Board found the TravTek-based grounds did not establish unpatentability.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “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: a POSITA would have had a combination of experience and education in electrical engineering and navigation systems. This typically would consist of a minimum of a bachelor degree in electrical engineering or a related engineering field plus 2-5 years of work and/or research experience in the field of electrical engineering and its subfield of navigation systems. Ex. 1003 ¶ 20. Patent Owner does not contest this level of skill for the person of ordinary skill in the art. Based on the final trial record before us, we adopt generally Dr. Braasch’s assessment of a person of ordinary skill in the art. Namely, that the person of ordinary skill in the art would have (1) a bachelor of science in electrical engineering or a related engineering field, and (2) 2–5 years of experience in the field of navigation systems.” slip op. at 23

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

    “is focused on whether the term should be construed in a broader lay sense as proposed by Petitioner (Pet. Reply 5, 7) or whether the term should be construed in accordance with the more specific descriptions found in the Specification as proposed by Patent Owner (PO Resp. 4–10). As addressed in more detail below, we decline to adopt Patent Owner’s proposed claim construction in whole because it adds unnecessary ambiguity. For example, “irregular or abnormal” do not add clarity to the definition. PO Resp. 7. If a feature is not necessary to give meaning to what the inventor means by a claim term, it would be “extraneous” and should not be read into the claim. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998). The Specification, however, does convey that the term “traffic jam” is not used in a layman’s sense, but instead used as a description of a situation arising from a data comparison meeting certain criteria as discussed below.” slip op. at 14

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner

    “We determine that the claim limitation “statistical application for collecting structured GPS data . . .” is not in means-plus-function format because it does not recite traditional “means-for” language and also because the claim limitation has sufficiently definite structure. We find Dr. Braasch’s testimony persuasive that a POSITA would have understood “computing individual statistical travel time estimates” to simply describe averaging collected travel times. Ex. 1003 ¶ 144; Ex. 1034 ¶ 36. We agree with Petitioner’s argument that, “the ’783 patent discloses that the ‘statistical or empirical travel times’ are ‘averages by necessity.’” Pet. Reply 22 (quoting Ex. 1001, 10:22–36) (citing Ex. 1034 ¶¶ 36–38).” slip op. at 20

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

    “Based on the final record, Petitioner has not provided sufficient arguments or credible evidence to support a finding that 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 4 also requires that the 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 claim elements.” slip op. at 30

  Patent outcomesUS 6,480,783 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,480,783
• Smith & Nephew, Inc. v. Conformis, Inc.All claims unpatentable
  PTAB · Jun 12, 2018 · IPR2017-00373 · APJ Beverly M Bunting · IPR · Final written decision

  Claims 29 and 30 are unpatentable as obvious over CAOS, Radermacher, and Woolson, and over Swaelens and Woolson; obviousness over Swaelens alone was not shown.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedOther

    “In our Decision on Institution, we agreed with Patent Owner that a person of ordinary skill in the art would have an understanding of, or experience working with, imaging technology, e.g., in preparation for performing surgery. Dec. 7. We also noted that the applied prior art, e.g., Radermacher, reflects the appropriate level of skill at the time of the claimed invention. Id. (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Patent Owner again argued in its Patent Owner Response that Petitioner’s position is incomplete because it does not include “experience with and an understanding of imaging technologies” or access to a person having such experience or understanding. PO Resp. 16–17. In his Reply Declaration, Dr. Mabrey agrees that “a POSITA ‘would have an understanding of, or experience working with, imaging technology, e.g., in preparation for performing surgery.”’ Ex. 1202 ¶ 15. Based on the entire record, we find that the person of ordinary skill in the art would be “an orthopedic surgeon having at least three years of experience in knee arthroplasty surgery” or “an engineer having a bachelor’s degree in biomedical engineering (or closely related discipline) who works with surgeons in designing cutting guides and who has at least three years of experience learning from these doctors about the use of such devices in joint replacement surgeries.” Additionally, this person would have experience with, or an understanding of, surgical imaging technologies, or would have access to such a person. Patent Owner challenges whether Dr. Mabrey has this additional qualification. PO Resp. 17–19. Our review of Dr. Mabrey’s experience, however, reveals that it aligns with our assessment of the appropriate skill level. See Ex. 1002 ¶¶ 4–9, 16–19, 43–57 (discussing personal and industry use of imaging); Ex. 1202 ¶¶ 17, 18, 19, 20 (“I have been formally trained on various forms of medical imaging, including x-ray, CT, MRI, and fluoroscopy in connection with both my orthopedic surgery residency and my decades-long practice as an orthopedic surgeon at four major academic medical centers.”). Thus, we find that Dr. Mabrey qualifies as one of skill in the art.” slip op. at 8

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

    “Having considered the entire record, our determination regarding the obviousness of the challenged claims does not turn on the interpretation of any of the claim terms. Thus, based on the final trial record before us, we determine that express construction of these terms or limitations is not necessary. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 9

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for patent owner

    “combine MRI and X-ray image data only if the two images could be co-registered, we agree with Petitioner that “[t]he claims simply require deriving the patient-specific surface from MRI and orienting a guide ‘based on information derived from’ the second image data set (e.g., x-ray).” Reply 15. Moreover, we credit the testimony of Dr. Mabrey that “it would have been obvious to a POSITA . . . to identify the mechanical axis on a standing x-ray, calculate the angle between the transcondylar axis and the mechanical axis, and manually transfer the mechanical axis to the [first] image,” e.g., an MRI or CT image, for use in creating a tool. Id. (citing Ex. 1202 ¶¶ 7–9, 40; Ex. 1211 ¶ 21; Ex. 1210, 37:11–41:19). More specifically, Dr. Mabrey states:” slip op. at 25

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

    “with ordinary skill in the art would have combined the teachings of CAOS, Radermacher, and Woolson, namely, that the POSITA would modify CAOS’s patient specific instrument using Radermacher’s teaching regarding the use of MRI imaging to make a patient-specific surface, and Woolson’s disclosure concerning the use of image data (e.g., x-ray or CT) to preoperatively identify the mechanical axis and plan the cuts to align the knee replacement implant with the patient’s mechanical axis, with a predictable result. See KSR, 550 U.S. at 418 (citing Kahn, 441 F.3d at 988 (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”)). As the Federal Circuit has made clear, when a reason to combine or modify references is in dispute, we must make a finding of a motivation to combine and must have an adequate evidentiary basis for that finding. See In re Nuvasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016). “‘[C]onclusory statements’ alone are insufficient and, instead, the finding must be supported by a ‘reasoned explanation.’” Id. at 1383 (quoting In re Lee, 277 F.3d 1338, 1342, 1345 (Fed. Cir. 2002)); accord id. at 1384 (not permitting the Board to effectively adopt the petitioner’s argument, which “amount[ed] to nothing more than conclusory statements that a PHOSITA would have been motivated to combine the prior art references to obtain additional information.”). Moreover, the Board “cannot rely solely on common knowledge or common sense to support [its] findings.” Id. at 1383.” slip op. at 20

  Patent outcomesUS 8,551,169 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,551,169
• Fisher & Paykel Healthcare Limited v. Resmed LimitedNo claims unpatentable
  PTAB · Jun 12, 2018 · IPR2017-00504 · APJ James J Mayberry · IPR · Final written decision

  Claims 1–66 were not shown unpatentable because Matula’s ball-and-socket interface permits relative rotation, failing the construed non-rotatable limitations.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “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” and ResMed, through Mr. Sleeper, defines the field of experience as “relevant product design.” 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 › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “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, we note that “rotation” describes a specific type of movement—movement around an axis or central point. See, e.g., Ex. 2003, 2 (defining the verb “rotate” as “to turn about an axis or a center”). That is, the claims of the ’556 patent do not require there be no movement between the frame module and main body of the cushion module (or cushion module). Instead, the claims restrict a specific type of movement—rotation. The language of the claims tell us more. The movement that is to be prevented is the relative rotation between the frame module and main body of the cushion module (or cushion module)— movement of one component relative to another. As ResMed argues, none of the “non-rotatable” limitations expressly recites any spatial aspects of the relative rotation. See PO Resp. 21. The language of the “non-rotatable” limitation unambiguously state that relative rotation is prevented. See Ex. 1101, 10:19–21 (reciting “the frame module and the main body having shapes that prevent relative rotation”), 13:4–6 (reciting “the frame module and the main body have complementary shapes that provide for non-rotatable engagement relative to one another”), 14:14– 16 (reciting “the main body being shaped complementary to the frame module such that the main body and the frame module are not rotatable relative to one another”), 16:21–22 (reciting “the frame module and the cushion module are not rotatable relative to one another”), 18:19–23 (reciting “a combined elbow and frame module that is releasably snap-fitted to the cushion module, in a non-rotatable manner”), 19:23–25 (reciting “the main body having shapes that prevent relative rotation”). That is, the plain language of the claims requires preventing any relative rotation, not just some relative rotation about certain arbitrary axes. See, e.g., Ex. 2005 ¶ 37 (“[T]he claim language here indicating that rotation is prevented generally between the frame module and the cushion module/main body, a [person having ordinary skill in the art] would have understood this language to mean that rotation about all axes of rotation (about x-axis, y-axis, and z-axis) is being prevented.”). Significantly, Fisher fails to explain adequately how the plain and ordinary meaning of preventing relative rotation means preventing some relative rotation only. Although we agree with Fisher that an interpretation where the “non-rotatable” limitations restrict relative rotation about at least one axis is broader than an interpretation that restricts all relative rotation, such an interpretation is not necessarily the broadest reasonable interpretation when, as here, it does not comport with the plain and ordinary meaning of the limitation. See, e.g., In re Smith Int’l, Inc., 871 F.3d 1375, 1383 (Fed. Cir. 2017) (concluding that the broadest reasonable interpretation differs from the broadest possible interpretation).” slip op. at 16

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

    “and socket 102 of its alleged main body of its cushion module interface or engage and because socket 102 rotates relative to ball 100 when knob 72 is actuated, we find that the embodiment of Matula that Petitioner relies on fails to satisfy the “non-rotatable” limitation of claim 1, as we have construed this term.9 For the reasons discussed above, we determine, based on the complete trial record, that Fisher has failed to demonstrate, by a preponderance of the evidence, that claim 1 is unpatentable under 35 U.S.C. § 103(a) over Matula.” slip op. at 47

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

    “The use of this type of connection provides a high degree of freedom of movement for the seal member so that the whole seal member does not simply mover linearly with respect to the faceplate when the adjustment mechanism is actuated. Instead, this configuration allows the upper is allowed to move on one direction, e.g., to be pushed away from the faceplate, while the lower portion at the opposite end of the seal member is moves in an opposite direction, e.g., is pushed toward the faceplate. In essence, the seal member is capable of being pivoted, articulated, or otherwise moved relative to the faceplate by this type of connection between the adjustment mechanism and the seal member. Id. ¶ 64 (emphasis added). For Matula’s seal member to pivot or articulate, socket 102 must move relative to ball 100 and the movement is a rotational movement. This function of a ball-and-socket joint is why Matula selected “this type of connection.” See id.; see also Ex. 2005 ¶¶ 54–56, 59 (describing the movement of Matula’s cushion module and adjustment mechanism 70). Specifically, when seal member 38 pivots or articulates, the point on seal member 38 where socket 102 connects to ring 104 will move in an arcuate path. Stem 76, on which ball 100 is connected, moves in a linear path. See Ex. 1102 ¶ 62. In order to transfer the linear movement of stem 76 and ball 100 to arcuate movement of ring 104, socket 102 rotates about ball 100. See id. ¶ 64. Indeed, Matula explains that, in an alternative embodiment, the adjustment mechanism can have a rigid connection (that is, not a ball-and-socket connection) with the seal member, which would result in the seal member moving linearly with respect to the faceplate.8 See Ex. 1102 ¶ 64. This description of the alternative embodiment further supports our finding that, with respect to the embodiment with ball 100 and socket 102, socket 102 rotates relative to ball 100. If this rotation did not take place, there would be no need for an alternative, rigid connection that would result in linear movement of the seal member. That is, if socket 102 did not rotate relative to ball 100, it would act identical to a rigid connection and result in linear movement of seal member 38, not articulating or pivoting (i.e., rotational) movement. Accordingly, because Matula’s ball 100 of its alleged frame module and socket 102 of its alleged main body of its cushion module interface or engage and because socket 102 rotates relative to ball 100 when knob 72 is actuated, we find that the embodiment of Matula that Petitioner relies on fails to satisfy the “non-rotatable” limitation of claim 1, as we have construed this term.9 For the reasons discussed above, we determine, based on the complete trial record, that Fisher has failed to demonstrate, by a preponderance of the evidence, that claim 1 is unpatentable under 35 U.S.C. § 103(a) over Matula. Further, in asserting that dependent claims 2–13, which depend, directly or indirectly from claim 1, are unpatentable, Fisher relies on its 8 We recognize that this alternative embodiment described in Matula would not include the relative rotation that we find in Matula’s ball-and-socket embodiment. The Petition, however, relies solely on Matula’s ball-and-socket embodiment and not an alternative embodiment. See Pet. 22, 30. 9 Because we find that Matula’s socket 102 rotates relative to ball 100 when knob 72 is actuated, we need not consider if any other movement asserted by ResMed takes Matula’s structure outside the scope of the “non-rotatable” limitation of claim 1. position that Matula discloses the “non-rotatable” limitation of claim 1. See Pet. 32–35 (addressing claims 2 and 4), 41 (addressing claims 3, 5, and 7), 94–97 (addressing claim 6), 98 (addressing claim 8), 105–109 (addressing claims 9–13). Accordingly, for the reasons discussed above in connection with our analysis of claim 1, we determine, based on the complete trial record, that Fisher has failed to demonstrate, by a preponderance of the evidence, that dependent claims 2–13 are unpatentable. 2. Claims 14–66” slip op. at 46

  Patent outcomesUS 9,027,556 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,027,556
• Fisher & Paykel Healthcare Limited v. Resmed LimitedRehearing denied
  PTAB · Apr 24, 2018 · IPR2017-00632 · APJ Beverly M Bunting · IPR · Rehearing

  The Board denied Fisher & Paykel’s rehearing request, leaving institution denied for claims 22 and 37 because it found no overlooked or misapprehended matter or abuse of discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “When considering a request for rehearing, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). On rehearing, the burden of showing that the Decision should be modified lies with the party challenging the Decision, in this case, Petitioner. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsNot shown unpatentable

    “claims 22 and 37 with the identified group of non-instituted claims. In our Decision, we expressly stated that “[c]laims 22 and 37 each require the second frame to include contact points that prevent rotation of the first frame with respect to the second frame.” Dec. 22. As Petitioner correctly points out, claims 22 and 37 depend from instituted claims 17 and 32, and further recite that “the second frame includes contact points [contacting the first frame] to prevent rotation of the first frame with respect to the second frame.” Req. Reh’g. 3–4 (citing Ex. 1001, 21:21–23, 22:44–47). Claim 17 requires “an opening located between the annular connection and the upper support member, the opening providing access to the first frame.” Ex. 1001, 21:4–7. Claim 32 similarly requires “a separate opening located between the annular opening and the upper support member, the separate opening providing access to the first frame while the mask assembly is fully assembled.” Id. at 22:28–31. Petitioner relied on its arguments directed to Decision, however, we were not persuaded by Petitioner’s primary argument directed to claim 81. Dec. 22. Namely, that Berthon-Jones and Barnett teach retaining the upper portion of opening 536 as a separate opening to limit or prevent unwanted rotation. See Pet. 43–44. Petitioner has not directed us to any disclosure in Berthon-Jones indicating that opening 536 performs an anti-rotation function. Rather, the function of securing the second frame to the first frame, as disclosed in Berthon-Jones, is performed by receiving holes 526, which snap-fit over connecting members 524. See Ex. 1002 ¶ 182, Fig. 51; see [Paper 7], 22–23. Dec. 18–19. Nonetheless, we were persuaded by Petitioner’s alternative argument, namely that “opening 526 located between the annular opening and upper member in the modified second frame corresponds to the ‘separate opening’ limitation.” Dec. 19 (citing Pet. 45; Ex. 1002 ¶ 182, Fig. 51). And, for the same reasons as stated with respect to claim 81, we were “persuaded at this preliminary stage of this proceeding that Petitioner has established a reasonable likelihood of prevailing on its contention that claims 17 and 32 would have been obvious over Berthon-Jones, Barnett, and Lithgow.” Id. at” slip op. at 3

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

    “Decision, however, we were not persuaded by Petitioner’s primary argument directed to claim 81. Dec. 22. Namely, that Berthon-Jones and Barnett teach retaining the upper portion of opening 536 as a separate opening to limit or prevent unwanted rotation. See Pet. 43–44. Petitioner has not directed us to any disclosure in Berthon-Jones indicating that opening 536 performs an anti-rotation function. Rather, the function of securing the second frame to the first frame, as disclosed in Berthon-Jones, is performed by receiving holes 526, which snap-fit over connecting members 524. See Ex. 1002 ¶ 182, Fig. 51; see [Paper 7], 22–23. Dec. 18–19. Nonetheless, we were persuaded by Petitioner’s alternative argument, namely that “opening 526 located between the annular opening and upper member in the modified second frame corresponds to the ‘separate opening’ limitation.” Dec. 19 (citing Pet. 45; Ex. 1002 ¶ 182, Fig. 51). And, for the same reasons as stated with respect to claim 81, we were “persuaded at this preliminary stage of this proceeding that Petitioner has established a reasonable likelihood of prevailing on its contention that claims 17 and 32 would have been obvious over Berthon-Jones, Barnett, and Lithgow.” Id. at” slip op. at 4

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “bracket or frame structure” was a known modification with predictable results.” Req. Reh’g. 5–9. Primarily, our determination that we were “not persuaded that a ‘bracket or frame structure’ would have been a predictable option for incorporating Barnett’s collar 34 into Berthon-Jones’s mask.” Id. at 5 (citing Dec. 18). By way of example and citing the testimony of Mr. Eaton, we stated by that “adding a ‘bracket or frame structure’ would have been just ‘[a]nother possible solution.’” Dec. 18. slip op. at 6

  § 103 obviousness
  Patents in suitUS 8,944,061
• 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

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.