• Smith & Nephew, Inc. v. Conformis, Inc.All claims unpatentable
  PTAB · Jun 12, 2018 · IPR2017-00373 · APJ Beverly M Bunting · IPR · Final written decision

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

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedOther

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

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

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

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for patent owner

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

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

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

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

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

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

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

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

    “See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“[T]he context in which a term is used in the [claim at issue] can be highly instructive.”). As a starting point, we note that “rotation” describes a specific type of movement—movement around an axis or central point. See, e.g., Ex. 2003, 2 (defining the verb “rotate” as “to turn about an axis or a center”). That is, the claims of the ’556 patent do not require there be no movement between the frame module and main body of the cushion module (or cushion module). Instead, the claims restrict a specific type of movement—rotation. The language of the claims tell us more. The movement that is to be prevented is the relative rotation between the frame module and main body of the cushion module (or cushion module)— movement of one component relative to another. As ResMed argues, none of the “non-rotatable” limitations expressly recites any spatial aspects of the relative rotation. See PO Resp. 21. The language of the “non-rotatable” limitation unambiguously state that relative rotation is prevented. See Ex. 1101, 10:19–21 (reciting “the frame module and the main body having shapes that prevent relative rotation”), 13:4–6 (reciting “the frame module and the main body have complementary shapes that provide for non-rotatable engagement relative to one another”), 14:14– 16 (reciting “the main body being shaped complementary to the frame module such that the main body and the frame module are not rotatable relative to one another”), 16:21–22 (reciting “the frame module and the cushion module are not rotatable relative to one another”), 18:19–23 (reciting “a combined elbow and frame module that is releasably snap-fitted to the cushion module, in a non-rotatable manner”), 19:23–25 (reciting “the main body having shapes that prevent relative rotation”). That is, the plain language of the claims requires preventing any relative rotation, not just some relative rotation about certain arbitrary axes. See, e.g., Ex. 2005 ¶ 37 (“[T]he claim language here indicating that rotation is prevented generally between the frame module and the cushion module/main body, a [person having ordinary skill in the art] would have understood this language to mean that rotation about all axes of rotation (about x-axis, y-axis, and z-axis) is being prevented.”). Significantly, Fisher fails to explain adequately how the plain and ordinary meaning of preventing relative rotation means preventing some relative rotation only. Although we agree with Fisher that an interpretation where the “non-rotatable” limitations restrict relative rotation about at least one axis is broader than an interpretation that restricts all relative rotation, such an interpretation is not necessarily the broadest reasonable interpretation when, as here, it does not comport with the plain and ordinary meaning of the limitation. See, e.g., In re Smith Int’l, Inc., 871 F.3d 1375, 1383 (Fed. Cir. 2017) (concluding that the broadest reasonable interpretation differs from the broadest possible interpretation).” slip op. at 16

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

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

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

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

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

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

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

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

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

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

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

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

  • Expert testimonyPatent owner expert creditedDecided for patent owner

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

  § 103 obviousness
  Patents in suitUS 8,944,061
• Fisher & Paykel Healthcare Limited v. Resmed LimitedSome claims unpatentable
  PTAB · Mar 7, 2018 · IPR2017-00059 · APJ James J Mayberry · IPR · Final written decision

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

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

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

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

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

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

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

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

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

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

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

  RulingsFinal written decision

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

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

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). In that regard, Petitioner’s expert, Dr. Braasch, testifies that:” slip op. at 18

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

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

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

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

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

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

  RulingsFinal written decision

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

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

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

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

  • Prior constructionTerm construed petitioner constructionDecided for petitioner

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

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

  Patent outcomesUS 8,088,016 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 8,088,016
• 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
• Wendt Corporation v. Iqasr, LLCInstitution denied
  PTAB · Sep 28, 2017 · IPR2017-01080 · APJ Richard H Marschall · IPR · Institution

  The Board denied institution because Petitioner failed to show a reasonable likelihood that claims 1–15, 18–20, and 22 were unpatentable over Jody or Jody and the 1998 Handbook.

  RulingsInstitution decision

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

    “We review the Petition under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the Preliminary Response, we determine that Petitioner has failed to demonstrate a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims. Accordingly, we decline to institute an inter partes review. A.” slip op. at 2

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

    “automobile shredder residue,” “sorting, non-ferrous recovery system,” “magnetic fuzz,” “selected magnetic fuzz,” “substantially free,” “recyclable materials,” and “air-locked automobile shredder residue sorting, non-ferrous recovery system” require construction. Pet. 12–35. In turn, Patent Owner proposes its own construction for those same terms. Prelim. Resp. 3–24. Having considered the evidence presented, we determine that we need only address the meaning of “magnetic fuzz” for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”). slip op. at 6

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable

    “The Petition also lacks an explicit inherency analysis. As Petitioner acknowledges in its legal background, inherent disclosure “necessarily describes” the unstated limitation. Pet. 35 (citing Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002)). Even if Petitioner established that magnetic fuzz is likely present and sorted using Jody’s process, that does not establish inherency. See Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639 (Fed. Cir. 2011) (“The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” (citation omitted)). To the extent that Petitioner’s argument that magnetic fuzz “would be part of the plastic-rich stream and initially would be sorted from the PUF, fines, etc.,” amounts to an inherency argument, it lacks adequate support. Pet. 40–41 (citing Ex. 1004 ¶ 69) (emphasis added). Petitioner’s assertion fails to address why magnetic fuzz would be present in Jody’s automobile shredder residue in the first place, much less that Jody’s process necessarily must sort that magnetic fuzz. Given Jody’s failure to disclose magnetic fuzz expressly, Petitioner needed to do more than merely assume that magnetic fuzz is present and assert that magnetic fuzz “would be” sorted, without explaining why this must be the case.” slip op. at 11

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

    “2. Discussion To establish anticipation under 35 U.S.C. § 102, “all of the elements and limitations of the claim must be shown in a single prior reference, arranged as in the claim.” Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Moreover, the reference must “enable one of ordinary skill in the art to make the invention without undue experimentation.” Impax Labs., Inc. v. Aventis Pharms. Inc., 545 F.3d 1312, 1314 (Fed. Cir. 2008); see In re LeGrice, 301 F.2d 929, 940–44 (CCPA 1962).” slip op. at 9

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,132,432
• Avx Corporation v. Presidio Components, Inc.Some claims unpatentable
  PTAB · Aug 21, 2017 · IPR2016-00636 · APJ Kimberly Mcgraw · IPR · Final written decision

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

  RulingsFinal written decision

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

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

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

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

  • Expert testimonyPetitioner expert creditedDecided for petitioner

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

  • Prior constructionPrior construction adoptedDecided for patent owner

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

  Patent outcomesUS 6,661,639 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,661,639
• Fisher & Paykel Healthcare Limited v. Resmed LimitedRehearing denied
  PTAB · Aug 17, 2017 · IPR2017-00218 · APJ James J Mayberry · IPR · Rehearing

  The Board denied Fisher & Paykel’s rehearing request, leaving institution denied because it found no abuse of discretion in its assessment of the claim limitation and Berthon-Jones.

  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 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

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

    “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” slip op. at 7

  • Strike new argumentNew argument disregardedDecided for patent owner

    “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. 23–25 (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§ 103 obviousness
  Patents in suitUS 9,381,316

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