- Packers Plus Energy Services Inc. / Packers Plus Energy Services (USA) Inc. v. Baker Hughes Oilfield Operations, LLCAll claims unpatentablePTAB · Nov 5, 2019 · IPR2018-01030 · APJ Barbara A Parvis · IPR · Final written decision
Claims 1, 5, 6, and 10–13 are unpatentable, principally because King’s second embodiment anticipates them; the contingent motion to amend is denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner contends, relying on the testimony of Mr. Gonzalez, that a person of ordinary skill in the art would have had a bachelor’s degree in petroleum or mechanical engineering, or other science or technical degree applicable in the oil and gas industry, and at least three years of experience in drilling and completions of oil and gas wells, including experience in well fracturing simulations. Pet. 23 (citing Ex. 1025 ¶¶ 41–43). Petitioner further contends that the artisan’s level of education necessary may increase or decrease depending on years of experience, and conversely the years of experience may increase or decrease depending on level of education. Id. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill or propose an alternative. PO Resp. 4. On the record before us, we are persuaded to adopt Mr. Gonzalez’s assessment of a person with ordinary skill in the art because it is consistent with the problems and solutions in the prior art of record. We further find that the prior art of record in the instant proceeding reflects the appropriate level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (“the prior art itself reflects an appropriate level” of ordinary skill in the art).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“In applying a broadest reasonable construction, claim terms generally are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Additionally, we must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“We start with whether “profile” is limited to a feature or element that makes contact with the ball. We agree with Petitioner that “profile” is not limited to features that make contact. Claim 1 recites “a profile disposed at the second portion configured to increase resistance to extrusion of a runnable member past the pluggable seat in comparison to the same pluggable seat without the profile.” Ex. 1001, 4:7–10 (emphasis added). Claim 11 recites a profile disposed at a second portion of the seat having a second diameter that is smaller than the first diameter and positioned downstream of the first portion, downstream being defined as a direction that the ball is moved into seating engagement with the seat, the profile being configured to require greater pressure required to extrude the ball past the first portion. Ex. 1001, 4:41–47. Consistent with Petitioner’s proposed construction (Pet. 22; Ex. 1025 ¶ 48), and contrary to Patent Owner’s contentions and the testimony of Mr. Watson (see, e.g., PO Resp. 14–16; Ex. 2010 ¶ 45), claims 1 and 11 recite that the “profile” is configured “to increase resistance” and “to require greater pressure,” respectively. Ex. 1001, 4:7–10, 4:41–47. Claims 1 and 11 also include recitations relating to seating, such as “seatable thereagainst” and “seating engagement,” but these recitations pertain to “a first portion” and defining the position of “a second portion,” i.e., “downstream,” respectively. Id. at 3:57, 4:3, 4:44. No similar terms are recited with respect to “profile.” Id. at 3:55–4:10, 4:33–47.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Regarding the first of Patent Owner’s assertions, consistent with Petitioner’s contentions and the testimony of Mr. Gonzalez and contrary to Patent Owner’s assertion and the testimony of Mr. Watson, Haugen describes an apparatus and method of operation for the release of concentric tubing strings used in well operations. Ex. 1003, at code (57). We agree with Petitioner that the ’829 Patent Specification does not limit the field of endeavor to “fracturing” or “sliding sleeves” and claim 1 does not recite that the “frustoconical surface” of the first portion prevents extrusion. Pet. Reply 17. Indeed, the ’829 Patent describes the field broadly as “industries concerned with earth formation boreholes, such as hydrocarbon recovery and gas sequestration.” Ex. 1001, 1:6–7. “When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” KSR at 417.” slip op. at 35
Patent outcomesUS 8,365,829 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,365,829 - Unified Patents Inc. v. Iron Oak Technologies, LLCAll claims unpatentablePTAB · 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 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 5,966,658 - PTAB · Jun 21, 2019 · IPR2019-00158 · APJ Beverly M Bunting · IPR · Rehearing
The Board denied the Patent Owner’s rehearing request, finding no misapprehension or oversight in its preliminary § 112(f) construction of “tool” for institution.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). On rehearing, the burden of showing that the Decision should be modified lies with the party challenging the Decision, in this case, Patent Owner. 37 C.F.R. § 42.71(d). A request for rehearing must identify specifically all matters the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). In our Decision, when considering the meaning and scope of the claim language, we “preliminarily determine[d] that the term tool is used merely as a generic placeholder meant to cover ‘the corresponding structure, material, or acts described in the specification and equivalents thereof.’” Dec. 16. Based on this understanding, we preliminarily agreed with” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). On rehearing, the burden of showing that the Decision should be modified lies with the party challenging the Decision, in this case, Patent Owner. 37 C.F.R. § 42.71(d). A request for rehearing must identify specifically all matters the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). In our Decision, when considering the meaning and scope of the claim language, we “preliminarily determine[d] that the term tool is used merely as a generic placeholder meant to cover ‘the corresponding structure, material, or acts described in the specification and equivalents thereof.’” Dec. 16. Based on this understanding, we preliminarily agreed with plus-function limitation having the function of imparting a deforming force on the deformable member, and the corresponding structure is a wedge, swage, shoulder, cone, ramp, mandrel, plug, and dart, as exemplified by tools 102, 122 and 142 disclosed in the ’439 patent.” Id. at 17–18. In its Preliminary Response, other than disputing Petitioner’s proposed construction, Patent Owner did not advance its own construction of tool. Prelim. Resp. 21–45. Now, Patent Owner’s stated basis for requesting rehearing is that we erred in preliminarily interpreting tool as a means-plusfunction (“MPF”) term. Req. Reh’g. 1.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(Paper 1, “Petition” or “Pet.”) requesting an inter partes review of claims 1–23 (“the challenged claims”) of U.S. Patent No. 9,080,439 B2 (Ex. 1003, “the ’439 patent”). Baker Hughes Oilfield Operations, LLC, (“Patent Owner”) filed a Preliminary Response to the Petition (Paper 6, “Prelim. Resp.”). On April 15, 2019, we entered a Decision on Institution (Paper 9, “Decision” or “Dec.”) in this proceeding, determining that Petitioner had demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim of the ’439 patent. Dec. 33. Patent Owner timely filed this Request for Rehearing of the Decision. Paper 12 (“Request” or “Req. Reh’g.”).” slip op. at 2
Claim constructionPatents in suitUS 9,080,439 - Expedia, Inc. / Homeaway.Com, Inc. et al. v. International Business Machines CorporationRehearing deniedPTAB · Jun 5, 2019 · IPR2018-01685 · APJ Beverly M Bunting · IPR · Rehearing
The Board denied the petitioner’s rehearing request, leaving in place the denial of institution because the petition did not persuasively map Barriga-Caceres to the construed federated-environment limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). On rehearing, the burden of showing that the Decision should be modified lies with the party challenging the Decision, in this case, Petitioner. 37 C.F.R. § 42.71(d). A request for rehearing must identify specifically all matters the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). Petitioner’s stated basis for rehearing is that we “misapprehended or overlooked that Barriga-Caceres’s disclosure would” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“and Orbitz, LLC (collectively “Petitioner”) filed a Petition (Paper 1, “Pet.”) to institute an inter partes review of claims 1–2, 4–11, and 15–20 (“the challenged claims”) of U.S. Patent No. 7,631,346 (Ex. 1001, “the ’346 patent”). International Business Machines Corp. (“Patent Owner”) filed a Preliminary Response (Paper 8, “Prelim. Resp.”). On April 11, 2019, we entered a Decision on Institution (Paper 10, “Decision” or “Dec.”) in this proceeding, determining that Petitioner had not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim of the ’346 patent on any of the asserted grounds. Dec. 22. Petitioner timely filed this Request for Rehearing of the Decision. Paper 11 (“Request” or “Req. Reh’g.”).” slip op. at 2
- BurdenDecided for patent owner
“(“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”). However, as the Supreme Court has counseled, “the statute envisions that a petitioner will seek an inter partes review of a particular kind—one guided by a petition describing ‘each claim challenged’ and ‘the grounds on which the challenge to each claim is based.’ [35 U.S.C.] § 312(a)(3). From the outset, we see that Congress chose to structure a process in which it’s the petitioner, not the Director, who gets to define the contours of the proceeding.” SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1355, 200 L. Ed. 2d 695 (2018). Although we are sympathetic to the timing of the Federal Circuit’s construction, Petitioner does not argue persuasively, or provide authority to the effect, that we should reformulate the Petition to fit this claim construction. The additional explanation Petitioner now offers, as discussed below, concerning how the teachings of Barriga-Caceres are mapped to the “federated computing environment” limitation using the claim construction from the Federal Circuit, was not presented in the Petition, and Petitioner did not attempt to make it available to us before our statutory deadline. That is, we could not have misapprehended or overlooked arguments and evidence not presented in a cohesive manner in the Petition.” slip op. at 6
NonePatents in suitUS 7,631,346 - Expedia, Inc. / Homeaway.Com, Inc. et al. v. International Business Machines CorporationRehearing deniedPTAB · Feb 6, 2019 · IPR2018-01134 · APJ David C Mckone · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no overlooked or misapprehended arguments and no abuse of discretion in instituting review over the challenged claims.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burden of showing that the Decision should be modified is on Patent Owner, the party challenging the Institution Decision. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for patent owner
“factor, where the petitioner had the benefit of materials from a previous proceeding.” Req. 12. The third General Plastic factor asks us to consider “whether at the time of filing of the second petition the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition.” General Plastic, Case IPR2016-01357, slip op. at 16. The General Plastic panel was “concerned here by the shifts in the prior art asserted and the related arguments in follow-on petitions.” Id. at 17. We fully considered the third General Plastic factor in our Institution Decision. Dec. 41–42. There, we explained that the extent of the guidance provided by the ’605 DDI was that the ’605 IPR petitioner failed to introduce meaningful argument or expert testimony to explain adequately (and allow the panel to evaluate) the relevance of Unleashed. Id. Thus, the extent of any roadmap given to Petitioner was that it ought to provide meaningful explanation and expert testimony in the petition itself to allow us to evaluate the relevance of Unleashed. Id. We found this to be entitled to less weight than a situation in which a petitioner changes its argument in response to the Board rejecting its argument in a previous case, or supplements its presentation of evidence in response to the Board finding a deficiency with a reference it presented in the previous case. Id. at 42.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner
“slip op.] at 15 (‘There is no per se rule precluding the filing of follow-on petitions.’).” Trial Practice Guide Update 10 (Aug. 2018) <https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_ Practice_Guide.pdf>. Indeed, as explained in the Institution Decision, Petitioner presented a strong case as to the merits. Dec. 24–35. This is an additional factor weighing against denial. Trial Practice Guide Update 10. We also weighed Patent Owner’s arguments in the context of the factors set forth in Becton, Dickenson, and concluded that, when considered together, those factors weighed against exercising our discretion under § 325(d). Dec. 37–40. In sum, we understood and fully considered Patent Owner’s arguments regarding General Plastic’s third factor, gave those arguments the weight they were due, and weighed the third factor along with the remaining factors outlined in General Plastic. We concluded that, when considered together, the factors weighed against exercising our discretion under § 314(a). We reached a similar conclusion upon considering factors relevant to our discretion under § 325(d). Patent Owner might disagree with our weighting of its arguments, but Patent Owner has not shown that we misapprehended or overlooked them, or that we were unreasonable in weighing those arguments in the context of all the factors.” slip op. at 7
Discretionary denialPatents in suitUS 5,961,601 - Abs Global, Inc. v. Cytonome/St, LLCRehearing deniedPTAB · Dec 14, 2018 · IPR2017-02163 · APJ Timothy J Goodson · IPR · Rehearing
The Board denied ABS Global’s rehearing request, leaving in place its denial of institution because the Petition did not show that Weigl teaches the claimed focusing regions.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. LEGAL STANDARD In a request for rehearing, “[t]he burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). Further, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“our Decision Denying Institution (Paper 11, “Decision” or “Dec.”). In that Decision, we concluded that Petitioner did not show a reasonable likelihood of prevailing in showing that any of the challenged claims of U.S. Patent No. 7,311,476 B2 (“the ’476 patent”) are unpatentable on any of the asserted grounds. See Dec. 22–27. Petitioner requests rehearing, arguing that we misapprehended or overlooked disclosures in Weigl,1 which was the primary reference Petitioner relied on in the asserted grounds. See Req. Reh’g 1. For the reasons set forth below, Petitioner’s request for rehearing is denied.” slip op. at 2
- BurdenDecided for patent owner
“helpful context, but in analyzing whether a petitioner has shown that the cited reference teaches a particular limitation, we look primarily to the section of the petition presenting arguments regarding that limitation. This flows from “the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim,’” Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)), as well as the requirement that “the Board must base its decision on arguments that were advanced by a party, and to which the opposing party was given a chance to respond.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016). See also Sirona Dental Systems GmbH v. Institut Straumann AG, 892 F.3d 1349, 1356 (Fed. Cir. 2018) (“It would . . . not be proper for the Board to deviate from the grounds in the petition and raise its own obviousness theory. . . .”). Here, the Request does not point to, and we do not find, any discussion of a constant-depth configuration in Weigl, in the Petition’s arguments regarding the “primary focusing region” and “secondary focusing region” limitations. See Pet. 39–44. Instead, as noted above, the Petition’s annotated drawings illustrating its contentions regarding these limitations show channel depth increasing, and the center fluid maintaining its dimensions as it flows downstream. The Request also argues that, leaving aside the constant-depth configuration, even a channel with increased depth would still serve to accelerate and narrow the center fluid. Req. 7–10. But here again, Petitioner did not present any such argument in the portion of its Petition arguing the “primary focusing region” and “secondary focusing region” limitations. See Pet. 39–44. The Request points to the summary of Weigl in the “Background of the Technology” section of the Petition. Req. 7–10 (citing Pet. 10–11). As such, we are not persuaded that our Decision overlooked or misapprehended Petitioner’s arguments regarding the “primary focusing region” and “secondary focusing region” limitations.” slip op. at 3
NonePatents in suitUS 7,311,476 - Fisher & Paykel Healthcare Limited v. Resmed LimitedSome claims unpatentablePTAB · Oct 23, 2018 · IPR2017-00501 · APJ James J Mayberry · IPR · Final written decision
Claims 61–64 are unpatentable under § 103; claims 1–60, 65, and 66 were not shown unpatentable under § 103.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(Paper 1, “Pet.”) requesting inter partes review of claims 1–66 (the “Challenged Claims”) of U.S. Patent No. 9,027,556 B2 (Ex. 1001, the “’556 patent”). Patent Owner, ResMed Ltd. (“ResMed”), filed a Preliminary Patent Owner Response to the Petition. Paper 7 (“Prelim. Resp.”). We instituted trial on claims 61–64 and 66 only. See Paper 8 (“Dec. on Inst.” or “Institution Decision”), 42–43 (instituting trial on claims 61–64 and 66 on four of the twelve asserted grounds); cf. Pet. 9–10 (listing the twelve asserted grounds).” slip op. at 2
- BurdenOther
“D. Asserted Grounds of Unpatentability In inter partes reviews, a petitioner bears the burden of proving unpatentability of the challenged claims, and the burden of persuasion never shifts to the patent owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail in this proceeding, Fisher must support its challenge by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). Accordingly, all of our findings and conclusions are based on a preponderance of the evidence.” slip op. at 27
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petition, how Barnett teaches using a different material that is more rigid than silicone for neck 46 and ribs 56. The Petition lays out certain factual statements, but draws no conclusion from those statements, leaving us to somehow connect the dots.” slip op. at 33
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMixed
“patent . . . that claims as innovation the combination of two known devices according to their established functions.” KSR Int’l Co., 550 U.S. at 418. Importantly, “obviousness must be determined in light of all the facts, and . . . a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (emphasis added); see also Winner Int’l, 202 F.3d at 1349 n.8 (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”). Accordingly, we weigh Fisher’s and ResMed’s evidence with respect to whether a person having ordinary skill in the art would have been motivated to modify Barnett with Ogden’s teaching of a main body of a cushion module using a material that is more” slip op. at 45
Patent outcomesUS 9,027,556 mixed§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,027,556 - Caterpillar Inc. v. Ernie BrookinsAll claims unpatentablePTAB · 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 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,824,290 - Google LLC v. Makor Issues & Rights Ltd.All claims unpatentablePTAB · 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 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,480,783 - Fisher & Paykel Healthcare Limited v. Resmed LimitedRehearing grantedPTAB · Jul 25, 2018 · IPR2017-00062 · APJ Barry L Grossman · IPR · Rehearing
Granted rehearing of claims 46, 51, 53–56, and 65 under SAS, with supplemental briefing and a supplemental patentability determination; the prior final written decision remains in place.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“request for rehearing, and also before the deadline for filing an appeal of the final written decision to the Federal Circuit, the Supreme Court issued its decision in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018). In SAS, the Supreme Court held that a final written decision under 35 U.S.C. § 318(a) must decide the patentability of all claims challenged in the petition. SAS, 138 S. Ct. at 154 (“So when [35 U.S.C.] § 318(a) says the Board's final written decision ‘shall’ resolve the patentability of ‘any patent claim challenged by the petitioner,’ it means the Board must address every claim the petitioner has challenged.”) Our final written decision did not comply with this requirement.” slip op. at 3
NonePatents in suitUS 9,119,931
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.