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

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

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner contends, relying on the testimony of Mr. Gonzalez, that a person of ordinary skill in the art would have had a bachelor’s degree in petroleum or mechanical engineering, or other science or technical degree applicable in the oil and gas industry, and at least three years of experience in drilling and completions of oil and gas wells, including experience in well fracturing simulations. Pet. 23 (citing Ex. 1025 ¶¶ 41–43). Petitioner further contends that the artisan’s level of education necessary may increase or decrease depending on years of experience, and conversely the years of experience may increase or decrease depending on level of education. Id. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill or propose an alternative. PO Resp. 4. On the record before us, we are persuaded to adopt Mr. Gonzalez’s assessment of a person with ordinary skill in the art because it is consistent with the problems and solutions in the prior art of record. We further find that the prior art of record in the instant proceeding reflects the appropriate level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (“the prior art itself reflects an appropriate level” of ordinary skill in the art).” slip op. at 8

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

    “In applying a broadest reasonable construction, claim terms generally are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Additionally, we must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).” slip op. at 13

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

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

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

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

  Patent outcomesUS 8,365,829 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,365,829
• Unified Patents Inc. v. Iron Oak Technologies, LLCAll claims unpatentable
  PTAB · Jul 15, 2019 · IPR2018-00486 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 1, 3, 4, 8, and 11 are unpatentable as obvious over Eriksson alone and over Eriksson and Schellinger.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent would have had at least a Master’s Degree in electrical engineering, computer science, or a related subject, or at least a Bachelor’s Degree in electrical engineering, computer science, or a related subject and three years of experience working with wireless networks and telephone systems. Pet. 13. Iron Oak does not dispute or comment on Unified’s assertion of the level of ordinary skill in the art or offer its own proposal regarding the level of ordinary skill in the art. See PO Resp. We adopt Unified’s proposed definition of the level of ordinary skill in the art because it appears reasonable and consistent with the ’658 Patent. We note that the asserted prior art of record also reflects this level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355” slip op. at 9

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

    “Based on the foregoing, we decline to adopt Iron Oak’s proposed construction of “communication path” because it is not supported by sufficient intrinsic or extrinsic evidence that defines communication path or otherwise demonstrates a clear intention to limit the scope of communication path as “uniquely” defined by the elements of the path. Further, based on the complete record and for purposes of this Final Written Decision, we maintain our preliminary construction of “communication path,” and conclude that a communication path is “any suitable element over which communications are transmitted or received” for the reasons provided in our Decision to Institute. This construction is consistent with the ’658 Patent Specification which provides that a “communication path may be uniquely defined by any one or a combination of the following: a network of satellitebased or land-based transceivers, a public switched telephone network . . . a mobile communication switching office . . ., or any other suitable element for communications.” See Ex. 1001, 1:20–25. As discussed above, Unified agrees with this claim construction.” slip op. at 19

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “First, Unified is correct that Iron Oak’s proposed construction seeks to add words to the claims. Essentially, Iron Oak requests that we narrow the scope of “a request for communication” to “a request for a specific communication.” Second, the portions of the Specification cited by Iron Oak do not support the proposed construction. Column 9, line 51 to column 10, line 5 describes, inter alia, that “mobile unit 32 may receive a request for communication,” that the request for communication “may specify various parameters for the communication,” and that the information relating to the parameters “may be conveyed in the form of one or more communication attributes.” Ex. 1001, 9:52–60. The cited passage describes a request for communication but it does not define a request for communication with respect to “a certain communication,” as Iron Oak asserts. Column 1, lines 10 to 39 describes various communication paths but does not mention the phrase “request for communication” let alone define the phrase as requested by Iron Oak. See id. 1:10–39. Figure 5 and 7 are flow charts detailing various processing steps including receiving a request for communication. Id. at Figs. 5, 7. However, neither figure provides support for Iron Oak’s proposed construction. For these reasons, we find that Iron Oak’s proposed construction is not suggested by the claim language or otherwise sufficiently supported by intrinsic evidence, and we decline to adopt this construction. Rather, we conclude that the term “request for communication” should be given its plain and ordinary meaning of a request that communication occur.” slip op. at 21

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

    “Ex. 1002, 5:55–57, 6:1–3, 6:26–56).8 For the following reasons, we determine that Unified presents persuasive arguments supported by convincing evidence to support a finding that Eriksson discloses the preamble of claim 1, including the recited communication paths, under either our construction or Iron Oak’s proposed construction of communication paths. Eriksson discloses an apparatus in which each of a plurality of cells is “served by at least one base station” where the base station includes transceiver 20, CPU 30, memory 40, and channel selector 50. Ex. 1002, 5:56–57, Fig. 1. Eriksson’s base station, thus, corresponds to an apparatus as appearing in the preamble of claim 1. Ex. 1003 ¶ 67. We note that Iron Oak does not address why Eriksson’s channels do not correspond to the recited communication paths under our construction of that term as set forth in the Decision to Institute and maintained herein. Further, Iron Oak does not squarely dispute the evidence presented by Unified in the Petition on this point. In particular, Unified’s expert, Dr. Haas, testifies by declaration that one of ordinary skill in the art “would have understood that the channels of Eriksson are communication paths.” Ex. 1003 ¶ 74. Dr. Haas supports this opinion with disclosure from Eriksson of “allocating channels for connections between base stations and mobiles” and selecting “a channel (‘communication path’) based on its characteristics.” Id. (citing Ex. 1002, Abstract, 7:50–53). Dr. Haas opines that this process is similar to the disclosure in the ’658 Patent of selecting “a ‘particular 8 As noted above, Iron Oak did not request leave to file a sur-reply and, thus, does not address Unified’s contentions and evidence submitted in the Petitioner Reply. communication path 16’ . . . based on its ‘characteristics.’” Id. (citing Ex. 1001, 4:4–9). Relying on various dictionary definitions and prior art references, Dr. Haas further opines that one of ordinary skill in the art “would have understood a ‘channel’ to be a ‘communication path’ based on ordinary usage of these terms.” Id. ¶ 75 (citations omitted). We find Dr. Haas’s testimony on this point to be credible and this testimony was not directly disputed by Iron Oak. Further, the Specification of the ’658 Patent supports Dr. Haas’s testimony by describing that “[c]ommunication over a communication path 16 may be implemented in a voice channel, control channel, paging channel part of a seized voice or data channel, . . . or other suitable technology.” Ex. 1001, 4:28–33. Based on the evidence presented by Unified including the declaration testimony of Dr. Haas discussed above that one of ordinary skill would have understood a channel to be a communication path as well as the reference to channels in the Specification of the ’658 Patent (see e.g., Ex. 1001, 4:28–33; Ex. 1003 ¶¶ 74–75), we find that Unified’s arguments and evidence establish that Eriksson’s channels correspond to communication paths as we have construed this term, because the channels constitute suitable elements over which communications are transmitted or received. See e.g,, Ex. 1002, Abstract, 6:23–26, 7:50–53.” slip op. at 30

  Patent outcomesUS 5,966,658 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 5,966,658
• Caterpillar Inc. v. Ernie BrookinsAll claims unpatentable
  PTAB · Sep 11, 2018 · IPR2017-01020 · APJ Jill D Hill · IPR · Final written decision

  Claims 1–10 are unpatentable: claims 1, 2, 6, and 7 as anticipated by Keiser and all claims under the stated obviousness grounds.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “3. “Rotational Power Distribution and Control System” Patent Owner repeats the same unsuccessful argument made in its Patent Owner Preliminary Response concerning limiting the phrase “rotational power distribution and control system” to a “fluid controlled resistance brake” because of the restriction requirement during prosecution. PO Resp. 3, 7–11. Patent Owner specifically argues that “[t]he patent application was restricted by the examiner to that of a ‘fluid controlled resistance brake’ (a hydraulic clutch) that takes the place of a standard clutch or torque converter and does not change gear ratio.” PO Resp. 8. Petitioner counters that Patent Owner does not cite to any authority that supports its novel proposition that election of a species during prosecution necessarily limits the scope of the claims, and that Patent Owner fails to “address the Board’s prior determination in any manner.” Reply 4. We agree. In our Decision on Institution, we preliminarily declined to limit the scope of 1 Patent Owner notes a claim construction ruling by a District Court in another proceeding involving the ’290 patent, construing “gear set” to mean “a gear set with three rotational interfaces.” Prelim. Resp. 14; Ex. 2001 at 15. claims 1–10 narrowly to include only the hydraulic clutch embodiment of Figures 1–3, or a “fluid controlled resistance brake” as argued by the Patent Owner. See PO Resp. 3, 7–8. Dec. on Inst. 11–12. Based on further review of the record, including the prosecution history and details of the restriction and election, we decline to limit the phrase “rotational power distribution and control system” to a “fluid controlled resistance brake” for the reasons provided in the Decision on Institution.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner, relying on the testimony of its declarant, contends that “[a] person of ordinary skill in the art at the time of the invention (“POSITA”) of the ’290 patent would have a degree in mechanical engineering or equivalent, and 3–5 years’ experience in the research, development, or application of hydraulic systems.” Pet. 12 (citing Ex. 1002 ¶¶ 14–17). According to Petitioner, “[t]his level of skill is approximate and more experience would compensate for less formal education, and vice versa.” Id. (citing Ex. 1002 ¶¶ 14–17). Although Patent Owner disagreed with Petitioner’s proposed definition in its Patent Owner Preliminary Response,2 Patent Owner does not dispute this contention directly in its Patent Owner Response. See, generally, PO Resp. Based on the entire record, we agree with Petitioner’s assessment, and find that a POSITA “would have [had] a degree in mechanical engineering or equivalent, and 3–5 years’ experience in the research, development, or application of hydraulic systems, and that significant experience with, or an understanding of hydraulic systems, would compensate for a formal degree.” Pet. 12. We also note that the cited references reflect the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself can reflect the appropriate level of skill in the art”).” slip op. at 13

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Additionally, we credit the testimony of Petitioner’s expert, Monika Ivantysynova, that the casing 110 of Keiser’s variator pump 100 shown in its Figure 9 “is the claimed ‘cylinder block’ recited in claim 1 of the ’290 patent,” such that Keiser’s variator pump 100 – and thus its cylinder block 110 – is disclosed as coupled to the sun gear. Ex. 1002, p. 28. According to Ms. Ivantysynova, Keiser’s cylinder block 110 “is interconnecting to the sun gear via the variator pump 100 (a power transfer mechanism) that is disposed outside of the continuously variable connection, i.e., not through a planetary [or differential] gear set.” Id. at 28–29 (citing Ex. 1004, 37:1–4). Patent Owner’s argument regarding a gear ratio change is not convincing because it is not commensurate with the scope of the claim. That is, the language of claim 1 does not recite coupling without a gear ratio change, and Patent Owner has not provided evidence or explanation regarding why the recitation of claim 1 necessitates a lack of gear ratio change. Based on the entire record, Petitioner presents sufficient arguments and credible evidence to support a finding that Keiser discloses “a cylinder block of said hydrostatic pump being coupled to one of said gear set” as required by claim 1.” slip op. at 26

  • BurdenUnpatentable

    “While an anticipatory reference “must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures,” (see Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (quoting In re Arkley, 455 F.2d 586, 587 (CCPA 1972)), the portions of Keiser on which Petitioner relies are directly related to each other by Keiser’s teachings that the pump of Keiser’s Figure 9 is an exemplary embodiment of a variator pump 14 as disclosed in Keiser’s Figure 1. See Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1343 (Fed. Cir. 2016) (distinguishing NetMoneyIN when the reference in question explicitly contemplated the combination of the disclosed functionalities).” slip op. at 25

  Patent outcomesUS 7,824,290 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,824,290
• Google LLC v. Makor Issues & Rights Ltd.All claims unpatentable
  PTAB · Aug 9, 2018 · IPR2017-00816 · APJ Robert L Kinder · IPR · Final written decision

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

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). In that regard, Petitioner’s expert, Dr. Braasch, testifies that: a POSITA would have had a combination of experience and education in electrical engineering and navigation systems. This typically would consist of a minimum of a bachelor degree in electrical engineering or a related engineering field plus 2-5 years of work and/or research experience in the field of electrical engineering and its subfield of navigation systems. Ex. 1003 ¶ 20. Patent Owner does not contest this level of skill for the person of ordinary skill in the art. Based on the final trial record before us, we adopt generally Dr. Braasch’s assessment of a person of ordinary skill in the art. Namely, that the person of ordinary skill in the art would have (1) a bachelor of science in electrical engineering or a related engineering field, and (2) 2–5 years of experience in the field of navigation systems.” slip op. at 23

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

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

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

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

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

    “Based on the final record, Petitioner has not provided sufficient arguments or credible evidence to support a finding that TravTek teaches the traffic jam limitation. Specifically, Petitioner has not persuasively shown how TravTek teaches the use of measured time delays of sample vehicles for computing a real time traffic jam. As explained above, we construed the term “traffic jam” to mean “a sudden unpredictable change of traffic in a segment as compared to regular times, i.e., individual statistical travel time estimates,” and thus the claimed “measuring time delays” must also be in relation to regular times. Claim 4 also requires that the traffic jam identification is determined by utilizing the sample vehicles for measuring time delays. Petitioner has not directed us to record evidence sufficient to show that TravTek teaches these claim elements.” slip op. at 30

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

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

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedOther

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

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

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

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for patent owner

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

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

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

  Patent outcomesUS 8,551,169 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,551,169
• Smith & Nephew, Inc. v. Conformis, Inc.All claims unpatentable
  PTAB · Apr 19, 2018 · IPR2017-00115 · APJ Amanda F Wieker · IPR · Final written decision

  Claims 1–20 are unpatentable under the instituted obviousness grounds based on combinations of Radermacher, Alexander or Fell, Woolson, and, for certain claims, Biscup.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Level of Ordinary Skill in the Art Petitioner identifies the skill level of a person of ordinary skill in the art as” slip op. at 12

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “testimony. Ex. 2005 ¶ 167. Dr. Clark’s testimony, however, merely repeats this statement from the Patent Owner Response without providing any supporting evidence or reasoning. Id. There is no substantive explanation of how Radermacher’s template addressed the issue of bone treatment technology lagging behind implant manufacturing technology. Accordingly, we give this testimony little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little to no weight.”). Rather, we agree with Petitioner that Radermacher’s statement that bone treatment technology was “lagging behind the technology of implant manufacture” would have caused one of ordinary skill in the art to consider implant-manufacturing technology, such as Fell, when designing bone treatment technology. See Ex. 1003, 6.” slip op. at 62

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

    “that Petitioner has provided a persuasive articulated reason with rational underpinning to support its contention that a person of ordinary skill would have had a reason or motivation to combine Radermacher, Alexander, and Woolson in the manner proposed by Petitioner. We also determine that Petitioner has provided analysis explaining how the combination would have conveyed to one of ordinary skill in the art each of the limitations of claim 1. Accordingly, we determine that Petitioner has demonstrated, by a preponderance of the evidence, that claim 1 is unpatentable under 35 U.S.C. § 103 as directed to subject matter that would have been obvious to a person of ordinary skill in the art in light of Radermacher, Alexander, and Woolson.” slip op. at 45

  • ExcludeMotion to exclude, deniedDenied

    “IV. MOTION TO EXCLUDE Patent Owner filed a Motion to Exclude Exhibit 1202, Dr. Mabrey’s” slip op. at 67

  Patent outcomesUS 9,216,025 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,216,025
• Fisher & Paykel Healthcare Limited v. Resmed LimitedAll claims unpatentable
  PTAB · Mar 29, 2018 · IPR2017-00062 · APJ Barry L Grossman · IPR · Final written decision

  Claims 43, 48–50, 57, 58, 60–64, 68–71, and 77–79 are unpatentable as obvious under § 103 over the four instituted combinations.

  RulingsFinal written decision

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

    “In an inter partes review, the Board gives claim terms in an unexpired patent their broadest reasonable interpretation in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under that standard, a claim term generally is given its 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). The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is “an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is ‘consistent with the specification.’” In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017) (citations omitted). The broadest reasonable interpretation differs from the “broadest possible interpretation.” Id. Only terms that are in controversy need to be construed expressly, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). We determine that a specific construction of the claims is not necessary to resolve the issues in this proceeding.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person having ordinary skill in the art (“PHOSITA”) “would have at least a bachelor’s degree in mechanical engineering, biomedical engineering or other similar type of engineering degree combined with at least two years of experience in the field of masks, respiratory therapy, patient interfaces or relevant product design experience.” Pet. 20 (quoting Ex. 1113 ¶ 27). Mr. Eaton mentions the factors he considered (Ex. 1113 ¶ 25), but does not explain how these factors influenced his opinion on the level of ordinary skill in the art (id. at ¶ 27). Patent Owner does not propose a specific level of skill in its Response, nor does Patent Owner comment in its Response on the level of skill proposed by Petitioner. In its Response, Patent Owner neither argues nor cites to Mr. Sleeper’s declaration, which proposes a level of skill. See Ex. 2002 ¶¶ 11–12. At the hearing in this proceeding, counsel for Patent Owner stated “[t]here is no dispute over the substance” of Petitioner’s proposed level of skill.” Tr. 18:4–9; see also Ex. 2002 ¶¶ 11–12 (providing Patent Owner’s declarant’s definition of the level of ordinary skill in the art, which is consistent with Petitioner’s definition).” slip op. at 14

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

    “We find that Mr. Eaton’s testimony, discussed above, provides substantial evidence that a person having ordinary skill in the art would have had good reason to modify D’Souza’s snap fit as proposed by Petitioner. We also find that a preponderance of the evidence establishes that it was within the skill and creativity of a person of ordinary skill to modify D’Souza to include a shroud that includes a retaining portion positioned rearwardly of the front opening, towards the frame, and structured to snap fit with the cushion, as suggested by the snap fit structure in Matula-II.” slip op. at 36

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

    “Here, Petitioner has relied on several references to assert unpatentability. Based on the evidence, we have determined that combining the disclosures of these several references would have been obvious and is not based on hindsight. As noted in KSR, “in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 420. A preponderance of the evidence establishes that this is the situation in the case before us. The structural and functional details recited in the Instituted Claims are all disclosed in the prior art. The level of ordinary skill is high – a bachelor’s degree in mechanical engineering, biomedical engineering or other similar type of engineering degree combined with at least two years of experience in the field of masks, respiratory therapy, patient interfaces, or relevant product design experience. As discussed above, a preponderance of the evidence establishes that assembling the puzzle of prior art to meet the desired functional needs of a CPAP mask system of effective, efficient, comfortable use by a patient would have been obvious to this highly skilled person. A preponderance of the evidence discussed above supports the conclusion that combining familiar elements of a CPAP mask, as recited in the Instituted Claims, is no more than the predictable use of prior art elements according to their established functions. KSR, 550 U.S. at 417. A preponderance of the evidence also provides persuasive reasons why these elements would have been combined, thus supporting the legal conclusion of obviousness. Accordingly, we determine that a preponderance of the evidence establishes that claims 43, 48–50, 57, 58, 60–64, 68–71, and 77–79 are unpatentable because the subject matter of each of these claims, considered as a whole, would have been obvious to a person having ordinary skill in the relevant technology of CPAP mask systems.” slip op. at 56

  Patent outcomesUS 9,119,931 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,119,931
• Fisher & Paykel Healthcare Limited v. Resmed LimitedAll claims unpatentable
  PTAB · Mar 21, 2018 · IPR2017-00061 · APJ Beverly M Bunting · IPR · Final written decision

  Claims 33–37 and 40–42 are unpatentable under § 103 over D’Souza-based combinations with Ultra Mirage, Matula-II, and, for dependent claims, Barnett or FlexiFit.

  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 asserts that a person having ordinary skill in the art (“PHOSITA”) “would have at least a bachelor’s degree in mechanical engineering, biomedical engineering or other similar type of engineering degree combined with at least two years of experience in the field of masks, respiratory therapy, patient interfaces or relevant product design experience.” Pet. 21 (citing Ex. 1013 ¶ 27). Patent Owner’s expert, Mr. Sleeper, generally accepts this framework, but according to his formulation, the POSITA “would have at least a bachelor’s degree in mechanical engineering, biomedical engineering, or a similar technical field, with at least two years of relevant product design experience. An increase in experience could compensate for less education, and an increase in education could likewise compensate for less experience.” Ex. 2002 ¶ 12. Our determination regarding the patentability of the challenged claims does not turn on the minor differences between these definitions. However, for the purpose of our analysis, we accept Petitioner’s formulation, finding that the POSITA “would have at least a bachelor’s degree in mechanical engineering, biomedical engineering or other similar type of engineering degree combined with at least two years of experience in the field of masks, respiratory therapy, patient interfaces or relevant product design experience.”” slip op. at 8

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

    “In its Petition, Petitioner does not propose that any specific claim term requires construction. Pet. 16. Instead, Petitioner asserts that “[t]he claims of the ’931 Patent should be accorded their “broadest reasonable construction” in light of the specification of the ’931 Patent.” Id. Patent Owner likewise takes the position that no express construction of any claim term is necessary. PO Resp. 21. 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 for purposes of this Final Written Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 10

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “articulated reasoning with rational underpinning explaining why a person with ordinary skill in the art would have also combined the teachings of D’Souza and Matula-II. Namely, that the POSITA would modify D’Souza’s shroud to include rearwardly extending snap fingers to provide a removable mechanical interlock between the shroud and cushion module, facilitate deformation of the engagement part; and make it easier to join the shroud to the cushion module. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[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. Here, neither Patent Owner, Mr. Eaton, nor Mr. Sleeper dispute that annular snap fits with fingers are common features in CPAP masks. See e.g., Ex. 1013 ¶¶ 89–95; Ex. 1025, 166:24–167:12. Petitioner supports its position by directing us to the cross-examination testimony of Patent Owner’s expert, Mr. Sleeper, “agree[ing] that a POSITA would have been motivated to modify the annular interlock of D’Souza and that the proposed modification would have been a known suitable option.” Pet. Reply 2 (citing Ex. 1025, 168:5—171:10, 173:24—174:15). Moreover, the parties’ experts agree that D’Souza’s flanged element 440 connects to the skeleton frame or shroud by at least an interlocking arrangement or snap fit. Id. at 4 (citing Ex. 1025, 150:5–151:25). And, Mr. Sleeper and Mr. Eaton agree that the disclosed interlocking arrangement taught by D’Souza would not function as expected, requiring a change to eliminate material stress and strain as discussed below (Pet. Reply 4–5): A Well, again, as this is described, both Mr. Eaton and I think it would break. So we had to describe -- he described four nice modifications that would make this work, but as described, I don't -- neither one of us see how this actually could go together without damage. Q Is it -- is it your opinion that as described in D’Souza that if the part 440 and part 448 were both made out of, say, polycarbonate, that there would be some material stress or strain if you were trying to put these pieces together? A That was in Mr. Eaton’s deposition and I agreed. Q You agree with that? And so would you also agree that looking at D’Souza, one of skill would be motivated to change that connection such that you were going to eliminate that material stress or strain? A Yes, if you were to make this work, you would have to change something. Q And you would also agree that in 2007, one of skill in the art would have been capable of making modifications to this connection at 440 and 448 such that you would minimize the material stress or strain, correct? A A person of skill in 2007? Q That’s right. A Yeah, I think that’s correct. Ex. 1025, 152:15–153:17 (emphasis added). Given the experts’ agreement that the interlocking arrangement taught by D’Souza would not function as expected due to concerns over material stress at the annular interlock between D’Souza’s shroud and frame, Petitioner argues persuasively that “this strain would have motivated a POSITA to modify D’Souza and that such a change would have been necessary to make D’Souza work as intended.” Pet. Reply 4–5 (citing Ex. 1025, 168:13–25, 153:3–9).” slip op. at 25

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

    “For these reasons, and based on the complete record, we are persuaded by Petitioner’s arguments and evidence and find that D’Souza teaches a shroud module having an annular opening with a retaining portion extending rearwardly from the opening for retaining a cushion module using a mechanical interlock. Likewise, we are persuaded by Petitioner’s arguments and evidence and find that Matula-II teaches a mechanical interlock that is a snap-fit.” slip op. at 22

  Patent outcomesUS 9,119,931 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,119,931
• 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
• Panduit Corp. v. Corning Optical Communications LLCAll claims unpatentable
  PTAB · Feb 27, 2018 · IPR2016-01703 · APJ Terrence W Mcmillin · IPR · Final written decision

  Claims 1–20 are unpatentable: claims 1–3, 5–15, and 18–20 as obvious over Smrha, Coburn, and Niazi; claims 4, 16, and 17 over those references and Wagner.

  RulingsFinal written decision

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

    “Ex. 1001, 16:31–36. The explicit recitation in the claims of a fiber optic module having, among other things, an inside and an optical fiber provided within the inside thereof, does not support Patent Owner’s argument that a housing with an inside and fiber optic components disposed within its walls are “already inherent” in the term “fiber optic module.” See PO Resp. 14. We agree with Petitioner’s assertion that Patent Owner’s proposed construction “has no foundation in the specification.” Reply 3. As” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner argues for a similar level of skill in the art, contending that “[a] person of ordinary skill in the art of the ’148 patent would have a bachelor’s degree in mechanical engineering, materials science, or a related field; and 2 years of experience in fiber optic equipment.” PO Resp. 1 (citing Ex. 2001 ¶¶ 14–15). We note the parties’ proposals differ in the specific number of years of experience required; however, neither party argues this distinction makes a difference in analyzing the asserted grounds or other issues in this proceeding. Based on this record, we determine that the level of ordinary skill proposed by Petitioner is consistent with the challenged patent and the asserted prior art. We, therefore, adopt that Petitioner’s proposed level of ordinary skill in the art. Our findings and conclusions, however, would be the same under either party’s proposed level of ordinary skill in the art.” slip op. at 18

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

    “have a reason or motivation to combine Coburn with Smrha and enclose the adapter panels. PO Resp. 16–26. According to Patent Owner, it does not make sense to enclose the adapter panels in modules because (1) “the open faced adapters in Smrha do not include any optical fibers that would require protection by a module” (PO Resp. 17); (2) the adapter panel arrangement in Smrha does not accommodate a rear connector (PO Resp. 19); and (3) Smrha discloses the use of open cable connection locations (PO Resp. 21). But, contrary to Patent Owner’s arguments, Petitioner relies on Coburn (see, e.g., Ex. 1005, Fig. 2) as teaching an enclosed module with an optical fiber inside, a module accommodating a rear connector, and cable connection locations inside an enclosed module. Pet. 38–39, 62–65. Patent Owner ignores that the combination of cited references teaches all the elements of the module guide system limitation and does not squarely address whether claim 1 would have been obvious in light of the proposed combination of the teachings in the cited art. Thus, Patent Owner’s argument is not persuasive. Considering this evidence and the arguments of the parties, we find Petitioner has shown that there existed a rational basis with articulated underpinnings to combine the teachings of Smrha and Coburn that is, “[m]odifying the well-known independently translatable modules as taught by Smrha with the structure of an encased cassette taught by Coburn would lead to the predictable result of independently translatable, fully-enclosed modules with connectors on the front and rear of the cassette.” Pet. 28 (citing Ex. 1003 ¶ 68). Accordingly, we find Coburn and Smrha teach all the elements of this limitation in claim 1 and that there existed a motivation to combine these teachings.” slip op. at 34

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “non-obviousness establishes that claim 113 of the ’148 patent would not have been obvious. PO Resp. 31–50. Patent Owner offers evidence of purported copying, praise by others, commercial success, long-felt need, recognition of a problem, and failure of others. Id. However, before this evidence may be given substantial weight with regard to the obviousness of claim 1, it must be shown that it relates to the invention recited in claim 1. Having considered all the arguments and evidence presented during trial, Patent Owner has failed to establish its purported evidence of non-obviousness relates to the invention recited in claim 1. With regard to Patent Owner’s EDGE product which is alleged to be covered by the ’148 patent, Patent Owner does not argue or present sufficient evidence establishing that there is, in the EDGE product itself, “at least one optical fiber provided within the inside of the at least one fiber 13 In its argument based on objective evidence of non-obviousness, Patent Owner refers only to claim 1. See PO Resp. 31 (“Objective Indicia Further Establish the Non-Obviousness of Claim 1”). Claims 2–20 are not referred to in this section of Patent Owner’s Response. Id. at 31–50. optical module connected to the at least one fiber optic adapter” as recited in claim 1 (Ex. 1001, 16:33–36). See PO Resp. 31–34; see also Reply 22 (“Nowhere in the ten pages of argument, or three self-serving declarations that Corning submits, can one find evidence of a nexus between any of copying, praise by others, commercial success, or a long, unfelt need for the EDGE™ system and the claimed features.”). The same deficiency exists in Patent Owner’s argument relating to Panduit’s HD Flex product which is alleged to be a copy of Patent Owner’s product. PO Resp. 34–46. In addition, Patent Owner’s arguments regarding commercial success, long-felt need, recognition of a problem, and failure of others seemingly relate to the “’938 patent”14 not the ’148 patent. See PO Resp. 47–50. Indeed, the ’148 patent is not referred to expressly in this part of Patent Owner’s Response. Id. And Patent Owner presents arguments which do not relate to limitations found in claim 1 of the ’148 patent, particularly with respect to the arguments emphasizing that the modules can be installed from the rear. Id. For example, Patent Owner argues, “[i]ndeed, as explained above, not only do these products [Corning’s EDGE and Panduit’s Flex] practice the claims of the ’938 patent, the feature recited in claim 1— slidable trays supporting rear-installable modules—is a ‘key’ feature used by both companies to sell these products and to distinguish them over the existing systems.” PO Resp. 48 (emphasis added). The installation of the modules from the rear or a guide system configured to receive a module from the rear is not recited in claim 1 of the ’148 patent. 14 We assume this is a reference to US Patent No. 8,184,938 B2 at issue in IPR2017-01709.” slip op. at 36

  Patent outcomesUS 8,452,148 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,452,148

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.