• 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
• 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 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
• Cree, Inc. v. Optolum, Inc.Institution denied
  PTAB · Dec 4, 2017 · IPR2017-01511 · APJ Nathan A Engels · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood of proving any challenged claim unpatentable, chiefly because Begemann did not disclose the claimed heat-conduction-to-contained-fluid limitation.

  RulingsInstitution decision

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

    “evidence. As explained below and given the evidence of record, we are not persuaded that Petitioner has demonstrated a reasonable likelihood that it will prevail on its assertions that Begemann anticipates either of claims 17 or 30. 1. Principles of Law” slip op. at 8

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

    “136 S. Ct. 2131, 2144–46 (2016) (upholding the Board’s use of the broadest reasonable interpretation standard in Inter Partes Review proceedings). Under the broadest reasonable interpretation standard, and absent any special definitions, claims terms 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. In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms or phrases must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, limitations are not to be read from the specification into the claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Petitioner advances interpretations of the claim terms “elongate,” “thermally conductive member,” and “heat dissipation protrusions.” Pet. 17–18. In turn, Patent Owner advances interpretations of “thermally conductive member,” “heat dissipation protrusions,” and “configured to.” Prelim. Resp. 17–21. Having considered the evidence of record and as reflected in the discussion below, we determine that express construction of these terms is not necessary for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “A claim is anticipated if each limitation of the claim is disclosed in a single prior art reference arranged as in the claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). “The requirement that the prior art elements themselves be ‘arranged as in the claim’ means that claims cannot be ‘treated . . . as mere catalogs of separate parts, in disregard of the part-to-part relationships set forth in the claims and that give the claims their meaning.’” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (quoting Lindemann Maschinenfabrik GmbH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1459 (Fed. Cir. 1984)). The Federal Circuit has also explained, however, that “a reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (citing In re Petering, 301 F.2d 676, 681 (CCPA 1962)).” slip op. at 8

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

    “likewise require that the thermally conductive member includes the “configured to” limitation and “one or more heat dissipation protrusions, at least one of said heat dissipation protrusions being carried on said elongate member outer surface” limitations discussed above. Ex. 1001 at 4:47–50, 5:60–63. In addition to the anticipation arguments for claims 17 and 30, Petitioner argues in the alternative, “[s]hould it be determined that Begemann does not disclose the claimed heat dissipation protrusions, then claim 17 is obvious in view of Begemann in combination with English” (Pet. 28) and “claim 30 is obvious in view of Begemann in combination with English . . . for reasons previously explained . . . for claim 17” (Pet. 59). According to Petitioner, English expressly discloses the placement of cooling fins on an exterior of a hollow, metal base portion of an elongated, thermally conductive metal support to further enhance heat dissipation for cooling LEDs mounted on the metal support. Pet. 31. Petitioner argues a person of ordinary skill would have been motivated to provide the cooling fins of the lamp of English to the outer surface of Begemann’s gear column to enhance the performance and/or efficiency of cooling the LEDs by enhancing heat dissipation away from the gear column, substrate, and LEDs “to air circulating inside and at the outer surface of the gear column 1.” Pet. 31 (citing Ex. 1008 ¶¶ 93–94). Further, Petitioner presents the following annotated copy of Begemann’s Figure 1 to illustrate its proposed modification of Begemann’s gear column using English’s fins: Petitioner’s annotated version of Begemann Figure 1 with accompanying text that describes providing cooling fins to the outer surface of Begemann’s gear column 1. Pet. 33 (citing Ex. 1003 at 4:6–9). As Patent Owner argues (Prelim. Resp. 39), Petitioner does not rely on English to meet the “configured to” limitation for either of claim 17 or 30 (see, e.g., Pet. 26–27, 55–56 (citing only Begemann for the “configure to” limitation)). Having determined above that Begemann fails to disclose the “configured to” limitation, Petitioner’s reliance on English to satisfy the heat dissipation protrusions limitation fails to cure the noted deficiencies in Begemann with regards to the “configured to” limitation of claims 17 and 30 of the ’028 Patent.” slip op. at 20

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,242,028
• Smith & Nephew, Inc. v. Conformis, Inc.Rehearing denied
  PTAB · 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 obviousness
  Patents in suitUS 8,377,129
• Fisher & Paykel Healthcare Limited v. Resmed LimitedRehearing denied
  PTAB · Aug 17, 2017 · IPR2017-00215 · APJ James J Mayberry · IPR · Rehearing

  The Board denied Fisher’s rehearing request, leaving trial denied because Fisher did not show an abuse of discretion in the findings on the fixed, non-adjustable position limitation.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision[,]” which party “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.” 37 C.F.R. § 42.71(d). And, because Fisher seeks rehearing of our Decision on Institution, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”). An abuse of discretion may arise 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. 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). A request for rehearing is not an opportunity to present new arguments. See 37 C.F.R. § 42.71(d) (requiring the rehearing request to “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”) (emphasis added).” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner

    “the effect of the prosecution history on the scope of the claims, as substantial evidence supports our findings. We understand that a prosecution disclaimer requires that a patentee make it clear “that the invention does not include a particular feature” and that, although “such disavowal can occur either explicitly or implicitly, it must be clear and unmistakable.” Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016). We are not persuaded by Fisher that ResMed’s disclaimer is limited to adjustment mechanisms that correspond to a structure that forms the engagement between a cushion component and a common frame.” slip op. at 5

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not reached

    “discretion. First, we do not understand Fisher as making this argument in the Petition. That is, we interpret Fisher to argue in the Petition that after a user adjusts the fit of mask 510 using adjustment wheels 530 to a desired configuration, the user will not further adjust the mask, and cushion/secondary frame 514 is in a fixed, non-adjustable position relative to chassis 512. See Pet. 27. We cannot misapprehend or overlook an argument that is not made. Even if the argument as Fisher articulates here is the argument in the Petition, we are not persuaded that we overlooked Berthon-Jones disclosing the “fixed, non-adjustable position” claim limitations, as substantial evidence supports our findings. Berthon-Jones’s adjustment is not the “wiggle” that ResMed referenced in its Preliminary Response, which would be associated with manufacturing tolerances and flexible materials that may allow for some small movement between the components.4 See Prelim. Resp. 15. Instead, Berthon-Jones discloses that its adjustment wheel 530 is used to adjust the sealing force or fit of the cushion against a user’s face— that is, the reason for adjustment wheel 530 as part of the mask is to adjust the cushion relative to the frame. See Ex. 1002 ¶ 186; see also ¶ 168 (“[Figures] 41 through 53 illustrate additional embodiments which allow 4 We stress that we do not decide whether the “fixed, non-adjustable position” claim limitations would encompass a structure with the “wiggle” that ResMed referenced in its Preliminary Response, as we do not need to reach that issued in deciding this Request.” slip op. at 10

  • Strike new argumentNew argument disregardedDecided for patent owner

    “discretion, as the argument is inconsistent with our construction of the “fixed, non-adjustable position” claim limitations. As we indicated above, we interpret these limitations to exclude masks with structures that adjust the 3 Fisher’s Petition did not identify raised central structure 538 as satisfying the subject matter of the fixed, non-adjustable position” claim limitations. See Pet. 25–27 (identifying protrusions 524 and receiving holes 526). We do not consider new arguments in a request for rehearing. See 37 C.F.R. § 42.71(d).” slip op. at 7

  Claim construction§ 102 anticipation
  Patents in suitUS 9,381,316
• Smith & Nephew, Inc. v. Conformis, Inc.Institution denied
  PTAB · Jul 26, 2017 · IPR2017-00307 · APJ James A Worth · IPR · Institution

  Institution was denied because Petitioner failed to show a reasonable likelihood that claims 1–20 were unpatentable over the asserted § 103 grounds.

  RulingsInstitution decision

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

    “Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under [35 U.S.C. §] 311 and any response filed under [35 U.S.C. §] 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108. For the reasons set forth below, we determine that Petitioner has not demonstrated that there is a reasonable likelihood that claims 1–20 are unpatentable. Accordingly, we do not institute an inter partes review of claims 1–20 based on the grounds asserted in the Petition.” slip op. at 2

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

    “unexpired patent according to the broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs. v. Lee, LLC, 136 S. Ct. 2131, 2142–46 (2016). Under that standard, and absent any special definitions, we give claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms must be set forth with reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Petitioner asserts no claim construction is necessary and that it “construes the claim language such that the claims are given their broadest reasonable interpretation in light of the specification of the ’025 patent.” Pet. 19. Patent Owner does not dispute this assertion. See generally Prelim. Resp. Having considered the evidence presented, we determine that express construction of any term is not necessary. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (court construes claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute).” slip op. at 7

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

    “Moreover, while Petitioner seemingly acknowledges that Schuster I and Schuster II are separate and distinct references (see Pet. 21), we agree with Patent Owner that Petitioner has failed to provide an articulated rationale for combining features of Schuster I and those of Schuster II, as required by KSR. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Claim 1 recites that “the patient-specific surface ha[s] at least a portion that is substantially a negative of a corresponding portion of a diseased or damaged cartilage surface of the joint of the patient.” Petitioner asserts that both Schuster I and Schuster II disclose a patient-specific surface. Pet. 27. Yet, Petitioner relies primarily on Figure 2 of Schuster II to describe how “a portion of the patient specific surface is substantially a negative of the cartilage surface.” Id. As discussed below, Petitioner’s arguments and evidence do not demonstrate sufficiently why one of skill in the art would have combined the tool of Schuster I with the tool of Schuster II, which includes a portion that is substantially a negative of the cartilage surface. According to Petitioner, “it would have been obvious to a POSITA to use MRI (as taught by Schuster I & II) to image the patient’s cartilage surface (as was common knowledge) and to make at least a portion of the patient-specific surface of the implantation aid be substantially a negative of the patient’s damaged cartilage surface.” Id. at 29–30 (citing Ex. 1002 ¶¶ 82–85). Relying on the testimony of its declarant, Petitioner proffers several reasons why one of skill in the art would have wanted to match the patient-specific surface to the corresponding cartilage. Id. at 30. For example, Petitioner asserts that “the Schuster references themselves provide the motivation.” Id. (citing Ex. 1008, 3:57–67, Fig. 2; Ex. 1046 ¶ 11; Ex. 1002 ¶ 84). In context, Petitioner is relying on the teachings from both Schuster I and Schuster II that the implantation aids are “set on the damaged knee joint.” Id. (citing Ex. 1008, 3:57–67, Fig. 2; Ex. 1046). However, such reasoning lacks rational underpinnings because it does not address the proposed modification of the tool of Schuster I using the tool of Schuster II, in which a portion of the tool is substantially a negative of the patient’s damaged cartilage surface. Petitioner further suggests that the combination would have been obvious as a matter of design choice, or as a choice from a limited number of finite options, to simplify the surgery, or to ensure “very exact positioning on the damaged knee joint.” Pet. 30–31 (citing Ex. 1002 ¶ 84); see also Ex. 1002 ¶ 84 (providing near verbatim discussion). We determine that these statements, as well as the portion of the Mabrey Declaration to which Petitioner refers, are conclusory as well, and do not provide significantly more than an assertion that they are directed to the same problem. See In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (explaining that Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements”); see also In re Nuvasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016) (reviewing case law and explaining that findings must be supported by a reasoned basis).” slip op. at 12

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingNot reached

    “likelihood of prevailing on its assertion that claims 1–20 of the ’025 patent are unpatentable. 4 IV. ORDER In consideration of the foregoing, it is hereby ORDERED that the Petition is denied. 4 Because we determine that Petitioner has not established a reasonable likelihood of success of prevailing on its contentions and do not institute an inter partes review, Petitioner’s request for joinder, or a consolidated schedule with, with Case IPR2017-00115 is also moot. See Pet. 24–25; see also id. at 22–24 (arguing lack of redundancy with Case IPR2017-00115).” slip op. at 17

  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 9,216,025
• Spectrum Brands, Inc. / Unikey Technologies, Inc. v. Assa Abloy ABSome claims unpatentable
  PTAB · Jan 12, 2017 · IPR2016-00686 · APJ Christopher G Paulraj · IPR · Final written decision

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

  RulingsFinal written decision

  • Expert testimonyPatent owner expert discountedDecided for petitioner

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

  • ExcludeMotion to exclude, deniedMixed

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

  • Skill levelSkill level board ownOther

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

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

    “We determine, for purpose of this Final Written Decision, that no terms in the challenged claims require express construction. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

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

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.