- Packers Plus Energy Services Inc. / Packers Plus Energy Services (USA) Inc. v. Baker Hughes Oilfield Operations, LLCAll claims unpatentablePTAB · 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 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,365,829 - PTAB · Jun 21, 2019 · IPR2019-00158 · APJ Beverly M Bunting · IPR · Rehearing
The Board denied the Patent Owner’s rehearing request, finding no misapprehension or oversight in its preliminary § 112(f) construction of “tool” for institution.
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, Patent Owner. 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). In our Decision, when considering the meaning and scope of the claim language, we “preliminarily determine[d] that the term tool is used merely as a generic placeholder meant to cover ‘the corresponding structure, material, or acts described in the specification and equivalents thereof.’” Dec. 16. Based on this understanding, we preliminarily agreed with” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“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, Patent Owner. 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). In our Decision, when considering the meaning and scope of the claim language, we “preliminarily determine[d] that the term tool is used merely as a generic placeholder meant to cover ‘the corresponding structure, material, or acts described in the specification and equivalents thereof.’” Dec. 16. Based on this understanding, we preliminarily agreed with plus-function limitation having the function of imparting a deforming force on the deformable member, and the corresponding structure is a wedge, swage, shoulder, cone, ramp, mandrel, plug, and dart, as exemplified by tools 102, 122 and 142 disclosed in the ’439 patent.” Id. at 17–18. In its Preliminary Response, other than disputing Petitioner’s proposed construction, Patent Owner did not advance its own construction of tool. Prelim. Resp. 21–45. Now, Patent Owner’s stated basis for requesting rehearing is that we erred in preliminarily interpreting tool as a means-plusfunction (“MPF”) term. Req. Reh’g. 1.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(Paper 1, “Petition” or “Pet.”) requesting an inter partes review of claims 1–23 (“the challenged claims”) of U.S. Patent No. 9,080,439 B2 (Ex. 1003, “the ’439 patent”). Baker Hughes Oilfield Operations, LLC, (“Patent Owner”) filed a Preliminary Response to the Petition (Paper 6, “Prelim. Resp.”). On April 15, 2019, we entered a Decision on Institution (Paper 9, “Decision” or “Dec.”) in this proceeding, determining that Petitioner had demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim of the ’439 patent. Dec. 33. Patent Owner timely filed this Request for Rehearing of the Decision. Paper 12 (“Request” or “Req. Reh’g.”).” slip op. at 2
Claim constructionPatents in suitUS 9,080,439 - Expedia, Inc. / Homeaway.Com, Inc. et al. v. International Business Machines CorporationRehearing deniedPTAB · 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
NonePatents in suitUS 7,631,346 - Expedia, Inc. / Homeaway.Com, Inc. et al. v. International Business Machines CorporationRehearing deniedPTAB · 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 denialPatents in suitUS 5,961,601 - Abs Global, Inc. v. Cytonome/St, LLCRehearing deniedPTAB · 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
NonePatents in suitUS 7,311,476 - Fisher & Paykel Healthcare Limited v. Resmed LimitedRehearing deniedPTAB · 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 obviousnessPatents in suitUS 8,944,061 - Smith & Nephew, Inc. v. Conformis, Inc.All claims unpatentablePTAB · Apr 19, 2018 · IPR2017-00115 · APJ Amanda F Wieker · IPR · Final written decision
Claims 1–20 are unpatentable under the instituted obviousness grounds based on combinations of Radermacher, Alexander or Fell, Woolson, and, for certain claims, Biscup.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Ordinary Skill in the Art Petitioner identifies the skill level of a person of ordinary skill in the art as” slip op. at 12
- Expert testimonyPatent owner expert discountedDecided for petitioner
“testimony. Ex. 2005 ¶ 167. Dr. Clark’s testimony, however, merely repeats this statement from the Patent Owner Response without providing any supporting evidence or reasoning. Id. There is no substantive explanation of how Radermacher’s template addressed the issue of bone treatment technology lagging behind implant manufacturing technology. Accordingly, we give this testimony little weight. See 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 to no weight.”). Rather, we agree with Petitioner that Radermacher’s statement that bone treatment technology was “lagging behind the technology of implant manufacture” would have caused one of ordinary skill in the art to consider implant-manufacturing technology, such as Fell, when designing bone treatment technology. See Ex. 1003, 6.” slip op. at 62
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“that Petitioner has provided a persuasive articulated reason with rational underpinning to support its contention that a person of ordinary skill would have had a reason or motivation to combine Radermacher, Alexander, and Woolson in the manner proposed by Petitioner. We also determine that Petitioner has provided analysis explaining how the combination would have conveyed to one of ordinary skill in the art each of the limitations of claim 1. Accordingly, we determine that Petitioner has demonstrated, by a preponderance of the evidence, that claim 1 is unpatentable under 35 U.S.C. § 103 as directed to subject matter that would have been obvious to a person of ordinary skill in the art in light of Radermacher, Alexander, and Woolson.” slip op. at 45
- ExcludeMotion to exclude, deniedDenied
“IV. MOTION TO EXCLUDE Patent Owner filed a Motion to Exclude Exhibit 1202, Dr. Mabrey’s” slip op. at 67
Patent outcomesUS 9,216,025 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,216,025 - Pacific Surf Designs, Inc. v. Surf Waves, Ltd.Some claims unpatentablePTAB · 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 mixedClaim construction§ 103 obviousnessPatents in suitUS 8,088,016 - Groupon, Inc. v. International Business Machines Corp.Rehearing deniedPTAB · Dec 7, 2017 · IPR2017-01158 · APJ Michelle N Wormmeester · IPR · Rehearing
The Board denied Groupon’s rehearing request, leaving institution denied on both § 103 grounds because the Petition did not adequately explain how the combinations would provide a federated computing environment.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“reviews the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked,” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s arguments with these principles in mind.” slip op. at 3
- BurdenDecided for patent owner
“we noted that the only claim element that Petitioner mentions as missing in Sunada and Mellmer is a “federated computing environment.” Inst. Dec. 11, 16. We found that Petitioner’s proffered rationale for combining Sunada or Mellmer with the LA Specifications to arrive at the claimed invention was inadequate because Petitioner did not address how modifying Sunada or Mellmer to implement Liberty Alliance’s method of exchanging attributes would provide a federated computing environment (i.e., the missing claim element). Id. at 11, 16.” slip op. at 7
- Strike new argumentNew argument disregardedDecided for patent owner
“new argument that Petitioner presents in order to offer more explanation, which does not address what we overlooked or misapprehended in our Institution Decision. In its Petition, Petitioner proposed combining the references by “us[ing] the methods for transferring attributes described in the LASpecs in the exchanges specifically described in Sunada and Mellmer.” Pet. 21–23. Petitioner explained that such combination “would allow a POSITA to obtain predictable results,” which Petitioner identified explicitly as “the transfer of information described in Sunada and Mellmer” (id. at 23), not as “a compliant implementation of Sunada or Mellmer to operate in a federated computing environment” (Req. Reh’g 7). At this stage, it is too late for Petitioner to add further explanation in a request for rehearing. See 37 C.F.R. § 42.71(d).” slip op. at 9
NonePatents in suitUS 7,631,346 - Smith & Nephew, Inc. v. Conformis, Inc.Rehearing deniedPTAB · Nov 29, 2017 · IPR2017-00372 · APJ James A Worth · IPR · Rehearing
The Board denied Smith & Nephew’s rehearing request, leaving institution denied for claims 1–83 because the petition failed to show a reasonable likelihood of obviousness.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes the Board misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 3
- BurdenNot reached
“II. DISCUSSION Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes the Board misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“combination of Radermacher and Kenna in which a cutting guide (as in Radermacher) is aligned intra-operatively (as in Kenna), but that the Decision did not address a combination of Radermacher and Kenna in which there is angular alignment (as in Kenna) when the cutting guide is planned pre-operatively (which Petitioner argues to have been taught in Radermacher). First, we regard this latter argument to be a new argument. The argument in the Petition is reproduced above. We conclude that the Petition provided inadequate argument and reasoning for combining the references in this manner, i.e., to take the intra-operative teachings of Kenna and apply them pre-operatively. Neither the Petition nor Declaration explain how this would have been accomplished or persuade us that such a combination would have been obvious (without intra-operative adjustment, as taught in Kenna). In particular, the Petition does not explain adequately how a person of ordinary skill would have included Kenna’s angle adjustment teaching in Radermacher’s prosthesis with a patient-specific surface, rather than rotating Kenna’s cutting guide intra-operatively. Although we appreciate Petitioner’s argument that the combination does not require bodily incorporation of one prior art device into another, we are not persuaded that the Petition adequately set forth what that combination would be, or how it would be achieved. See, e.g., Pet. 43–45 (quoting Kenna and asserting it would have been obvious to combine the teachings of the prior art).” slip op. at 9
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner’s reliance on Exhibits 1051, 1054, 1055, and 1057 is misplaced because the Petition did not contain developed arguments with respect thereto, and we regard this as a new argument. As such, we determine that we did not overlook or misapprehend any arguments with respect to Exhibits 1051, 1054, 1055, and 1057. To the extent that Petitioner relies on Kenna for the argued limitation, we address that contention below.” slip op. at 5
§ 103 obviousnessPatents in suitUS 8,377,129
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.