- Groupon, Inc. v. International Business Machines Corp.Rehearing deniedPTAB · Dec 7, 2017 · IPR2017-01158 · APJ Michelle N Wormmeester · IPR · Rehearing
The Board denied Groupon’s rehearing request, leaving institution denied on both § 103 grounds because the Petition did not adequately explain how the combinations would provide a federated computing environment.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“reviews the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked,” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s arguments with these principles in mind.” slip op. at 3
- BurdenDecided for patent owner
“we noted that the only claim element that Petitioner mentions as missing in Sunada and Mellmer is a “federated computing environment.” Inst. Dec. 11, 16. We found that Petitioner’s proffered rationale for combining Sunada or Mellmer with the LA Specifications to arrive at the claimed invention was inadequate because Petitioner did not address how modifying Sunada or Mellmer to implement Liberty Alliance’s method of exchanging attributes would provide a federated computing environment (i.e., the missing claim element). Id. at 11, 16.” slip op. at 7
- Strike new argumentNew argument disregardedDecided for patent owner
“new argument that Petitioner presents in order to offer more explanation, which does not address what we overlooked or misapprehended in our Institution Decision. In its Petition, Petitioner proposed combining the references by “us[ing] the methods for transferring attributes described in the LASpecs in the exchanges specifically described in Sunada and Mellmer.” Pet. 21–23. Petitioner explained that such combination “would allow a POSITA to obtain predictable results,” which Petitioner identified explicitly as “the transfer of information described in Sunada and Mellmer” (id. at 23), not as “a compliant implementation of Sunada or Mellmer to operate in a federated computing environment” (Req. Reh’g 7). At this stage, it is too late for Petitioner to add further explanation in a request for rehearing. See 37 C.F.R. § 42.71(d).” slip op. at 9
NonePatents in suitUS 7,631,346 - Cree, Inc. v. Optolum, Inc.Institution deniedPTAB · Dec 4, 2017 · IPR2017-01511 · APJ Nathan A Engels · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of proving any challenged claim unpatentable, chiefly because Begemann did not disclose the claimed heat-conduction-to-contained-fluid limitation.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“evidence. As explained below and given the evidence of record, we are not persuaded that Petitioner has demonstrated a reasonable likelihood that it will prevail on its assertions that Begemann anticipates either of claims 17 or 30. 1. Principles of Law” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“136 S. Ct. 2131, 2144–46 (2016) (upholding the Board’s use of the broadest reasonable interpretation standard in Inter Partes Review proceedings). Under the broadest reasonable interpretation standard, and absent any special definitions, claims terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms or phrases must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, limitations are not to be read from the specification into the claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Petitioner advances interpretations of the claim terms “elongate,” “thermally conductive member,” and “heat dissipation protrusions.” Pet. 17–18. In turn, Patent Owner advances interpretations of “thermally conductive member,” “heat dissipation protrusions,” and “configured to.” Prelim. Resp. 17–21. Having considered the evidence of record and as reflected in the discussion below, we determine that express construction of these terms is not necessary for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“A claim is anticipated if each limitation of the claim is disclosed in a single prior art reference arranged as in the claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). “The requirement that the prior art elements themselves be ‘arranged as in the claim’ means that claims cannot be ‘treated . . . as mere catalogs of separate parts, in disregard of the part-to-part relationships set forth in the claims and that give the claims their meaning.’” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (quoting Lindemann Maschinenfabrik GmbH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1459 (Fed. Cir. 1984)). The Federal Circuit has also explained, however, that “a reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (citing In re Petering, 301 F.2d 676, 681 (CCPA 1962)).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“likewise require that the thermally conductive member includes the “configured to” limitation and “one or more heat dissipation protrusions, at least one of said heat dissipation protrusions being carried on said elongate member outer surface” limitations discussed above. Ex. 1001 at 4:47–50, 5:60–63. In addition to the anticipation arguments for claims 17 and 30, Petitioner argues in the alternative, “[s]hould it be determined that Begemann does not disclose the claimed heat dissipation protrusions, then claim 17 is obvious in view of Begemann in combination with English” (Pet. 28) and “claim 30 is obvious in view of Begemann in combination with English . . . for reasons previously explained . . . for claim 17” (Pet. 59). According to Petitioner, English expressly discloses the placement of cooling fins on an exterior of a hollow, metal base portion of an elongated, thermally conductive metal support to further enhance heat dissipation for cooling LEDs mounted on the metal support. Pet. 31. Petitioner argues a person of ordinary skill would have been motivated to provide the cooling fins of the lamp of English to the outer surface of Begemann’s gear column to enhance the performance and/or efficiency of cooling the LEDs by enhancing heat dissipation away from the gear column, substrate, and LEDs “to air circulating inside and at the outer surface of the gear column 1.” Pet. 31 (citing Ex. 1008 ¶¶ 93–94). Further, Petitioner presents the following annotated copy of Begemann’s Figure 1 to illustrate its proposed modification of Begemann’s gear column using English’s fins: Petitioner’s annotated version of Begemann Figure 1 with accompanying text that describes providing cooling fins to the outer surface of Begemann’s gear column 1. Pet. 33 (citing Ex. 1003 at 4:6–9). As Patent Owner argues (Prelim. Resp. 39), Petitioner does not rely on English to meet the “configured to” limitation for either of claim 17 or 30 (see, e.g., Pet. 26–27, 55–56 (citing only Begemann for the “configure to” limitation)). Having determined above that Begemann fails to disclose the “configured to” limitation, Petitioner’s reliance on English to satisfy the heat dissipation protrusions limitation fails to cure the noted deficiencies in Begemann with regards to the “configured to” limitation of claims 17 and 30 of the ’028 Patent.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,242,028 - Smith & Nephew, Inc. v. Conformis, Inc.Rehearing deniedPTAB · Nov 29, 2017 · IPR2017-00372 · APJ James A Worth · IPR · Rehearing
The Board denied Smith & Nephew’s rehearing request, leaving institution denied for claims 1–83 because the petition failed to show a reasonable likelihood of obviousness.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes the Board misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 3
- BurdenNot reached
“II. DISCUSSION Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes the Board misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“combination of Radermacher and Kenna in which a cutting guide (as in Radermacher) is aligned intra-operatively (as in Kenna), but that the Decision did not address a combination of Radermacher and Kenna in which there is angular alignment (as in Kenna) when the cutting guide is planned pre-operatively (which Petitioner argues to have been taught in Radermacher). First, we regard this latter argument to be a new argument. The argument in the Petition is reproduced above. We conclude that the Petition provided inadequate argument and reasoning for combining the references in this manner, i.e., to take the intra-operative teachings of Kenna and apply them pre-operatively. Neither the Petition nor Declaration explain how this would have been accomplished or persuade us that such a combination would have been obvious (without intra-operative adjustment, as taught in Kenna). In particular, the Petition does not explain adequately how a person of ordinary skill would have included Kenna’s angle adjustment teaching in Radermacher’s prosthesis with a patient-specific surface, rather than rotating Kenna’s cutting guide intra-operatively. Although we appreciate Petitioner’s argument that the combination does not require bodily incorporation of one prior art device into another, we are not persuaded that the Petition adequately set forth what that combination would be, or how it would be achieved. See, e.g., Pet. 43–45 (quoting Kenna and asserting it would have been obvious to combine the teachings of the prior art).” slip op. at 9
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner’s reliance on Exhibits 1051, 1054, 1055, and 1057 is misplaced because the Petition did not contain developed arguments with respect thereto, and we regard this as a new argument. As such, we determine that we did not overlook or misapprehend any arguments with respect to Exhibits 1051, 1054, 1055, and 1057. To the extent that Petitioner relies on Kenna for the argued limitation, we address that contention below.” slip op. at 5
§ 103 obviousnessPatents in suitUS 8,377,129 - Wendt Corporation v. Iqasr, LLCInstitution deniedPTAB · Sep 28, 2017 · IPR2017-01080 · APJ Richard H Marschall · IPR · Institution
The Board denied institution because Petitioner failed to show a reasonable likelihood that claims 1–15, 18–20, and 22 were unpatentable over Jody or Jody and the 1998 Handbook.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We review the Petition under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the Preliminary Response, we determine that Petitioner has failed to demonstrate a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims. Accordingly, we decline to institute an inter partes review. A.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“automobile shredder residue,” “sorting, non-ferrous recovery system,” “magnetic fuzz,” “selected magnetic fuzz,” “substantially free,” “recyclable materials,” and “air-locked automobile shredder residue sorting, non-ferrous recovery system” require construction. Pet. 12–35. In turn, Patent Owner proposes its own construction for those same terms. Prelim. Resp. 3–24. Having considered the evidence presented, we determine that we need only address the meaning of “magnetic fuzz” for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”). slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“The Petition also lacks an explicit inherency analysis. As Petitioner acknowledges in its legal background, inherent disclosure “necessarily describes” the unstated limitation. Pet. 35 (citing Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002)). Even if Petitioner established that magnetic fuzz is likely present and sorted using Jody’s process, that does not establish inherency. See Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639 (Fed. Cir. 2011) (“The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” (citation omitted)). To the extent that Petitioner’s argument that magnetic fuzz “would be part of the plastic-rich stream and initially would be sorted from the PUF, fines, etc.,” amounts to an inherency argument, it lacks adequate support. Pet. 40–41 (citing Ex. 1004 ¶ 69) (emphasis added). Petitioner’s assertion fails to address why magnetic fuzz would be present in Jody’s automobile shredder residue in the first place, much less that Jody’s process necessarily must sort that magnetic fuzz. Given Jody’s failure to disclose magnetic fuzz expressly, Petitioner needed to do more than merely assume that magnetic fuzz is present and assert that magnetic fuzz “would be” sorted, without explaining why this must be the case.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“2. Discussion To establish anticipation under 35 U.S.C. § 102, “all of the elements and limitations of the claim must be shown in a single prior reference, arranged as in the claim.” Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Moreover, the reference must “enable one of ordinary skill in the art to make the invention without undue experimentation.” Impax Labs., Inc. v. Aventis Pharms. Inc., 545 F.3d 1312, 1314 (Fed. Cir. 2008); see In re LeGrice, 301 F.2d 929, 940–44 (CCPA 1962).” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,132,432 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Advanced Touchscreen And Gesture Technologies, LLCAll claims unpatentablePTAB · Aug 29, 2017 · IPR2016-00653 · APJ Beverly M Bunting · IPR · Final written decision
Claims 20, 33, 35, and 36 are unpatentable as obvious over Westerman and Bach, and over Ure, Edwards, Harrison, and Stearns.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Inc. (collectively “Petitioner”) filed a Petition requesting inter partes review of claims 20, 33, 35, and 36 of U.S. Patent No. 8,717,303 B2 (Ex. 1001, “the ’303 patent”). Paper 1 (“Pet.”). Advanced Touchscreen and Gesture Technologies, LLC (“Patent Owner”) filed a Preliminary Response. Paper 8 (“Prelim. Resp.”). Taking into account the arguments presented in the Preliminary Response, we determined that the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail with respect to its challenge of claims 20, 33, 35 and 36 (“the challenged claims”) of the ’303 patent. Pursuant to 35 U.S.C. § 314, we instituted this trial on August 31, 2016, based on the grounds identified in the Order section of the Decision on Institution. Paper 9, 44 (“Dec. on Inst.”).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Edwards and Harrison, for the foregoing reasons and based on the evidence before us, we find that one of ordinary skill in the art would have incorporated Stearns’ touch sensors in the touch-sensitive device of Ure “in order to provide a device that, e.g., identifies errant touches, responds to touch by non-conductive objects, and avoids erroneous detections of touch caused by environmental factors.” Ex. 1003 ¶ 250 (citing Ex. 1011, 1:6–10; 1007, 1:6–8.” slip op. at 93
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“secondary considerations of non-obviousness. As to secondary considerations, we note that factual inquiries for an obviousness determination include secondary considerations based on evaluation and crediting of objective evidence of nonobviousness. Graham, 383 U.S. at 17. Notwithstanding what the teachings of the prior art would have suggested to one with ordinary skill in the art at the time of the invention, the totality of the evidence submitted, including objective evidence of nonobviousness, may lead to a conclusion that the claimed invention would not have been obvious to one with ordinary skill in the art. In re Piasecki, 745 F.2d 1468, 1471–1472 (Fed. Cir. 1984). Such a conclusion, however, requires the finding of a nexus to” slip op. at 68
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“by a preponderance of the evidence that claims 20, 33, 35, and 36 are unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of Ure, Edwards, Harrison, and Stearns.” slip op. at 103
Patent outcomesUS 8,717,303 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,717,303 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Advanced Touchscreen And Gesture Technologies, LLCAll claims unpatentablePTAB · Aug 29, 2017 · IPR2016-00652 · APJ Beverly M Bunting · IPR · Final written decision
Claims 1 and 4–6 are unpatentable as obvious over Westerman and Bach, and over Ure, Edwards, Harrison, and Stearns.
RulingsFinal written decision- Expert testimonyOther
“explaining why a person with ordinary skill in the art would have combined the teachings of Westerman and Bach. Pet. 18–20. For the reasons discussed below, we find that Petitioner’s reasons to combine the prior art teachings are supported by sufficient explanation and credible evidence. See, e.g., Ex. 1033 ¶¶ 66–69, 71–79. See also 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 [our] findings.” Id. at 1383.” slip op. at 40
- Skill levelOther
“C. Level of Skill in the Art In determining the level of ordinary skill in the art, various factors” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
Patent outcomesUS 8,743,076 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,743,076 - Avx Corporation v. Presidio Components, Inc.Some claims unpatentablePTAB · Aug 21, 2017 · IPR2016-00636 · APJ Kimberly Mcgraw · IPR · Final written decision
Claims 13–16 and 18 are unpatentable under §103; claims 1–12, 17, and 19–21 were not shown unpatentable because the asserted combinations relying on Liebowitz and Devoe lacked sufficient motivation to combine.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayNot shown unpatentableMotivation not foundNot shown unpatentable
“Liebowitz discloses a “high inductance drawback” to buried metallizations and vias, and expressly states that its invention is designed to “avoid[] any of these inductance-increasing methods.” Ex. 1004, 1:40–53; see also Ex. 2009, 113 (prosecution history of the ’639 patent, where the applicants distinguished Devoe by arguing that “the present invention recognizes that buried multi-layered structures can be used to make capacitors using vias and edge connections” and “it is this very construction that the present inventor seeks to avoid” (emphases omitted)). Indeed, Dr. Chung in her declaration filed in support of the Petition expressly recognized the high inductance drawback mentioned in Liebowitz. Ex. 1003 ¶ 49. Yet Petitioner’s proposed combination is based on a POSITA looking to Devoe to incorporate the very feature that Liebowitz states should be avoided. Petitioner and Dr. Chung do not account sufficiently for this express disclosure in Liebowitz. Instead, Dr. Chung testifies that a skilled artisan would have understood that the benefits of increased capacitance “may outweigh any negative impacts of an increase in inductance” because “the inductance concerns raised in Liebowitz are not always applicable.” Ex. 1003 ¶ 49 (emphasis added). Dr. Chung concludes that a skilled artisan would have combined the buried metallizations and vias of Devoe with the capacitor of Liebowitz “when increasing capacitance is of greater concern than lowering inductance.” Id. However, Petitioner does not provide sufficient explanation or credible evidence to explain when or under what circumstances increasing capacitance would have been of greater concern than lowering capacitance, or sufficient evidence to show that a skilled artisan would have understood that the benefits of increased capacitance would have outweighed the negative effects of high inductance. In particular, Dr. Chung’s unsupported and equivocal testimony that increased capacitance “may” outweigh increased inductance is insufficient for Petitioner to meet its burden.11 See id.” slip op. at 24
- Skill levelSkill level patent owner adoptedPetitioner expert creditedDecided for patent owner
“We disagree with Patent Owner’s contention that a declarant must actually be a person of ordinary skill in the art in order to present testimony as to what a person of ordinary skill in the art would have understood at the time of the invention. See, e.g., SEB S.A. v. Montgomery Ward & Co. Inc., 594 F.3d 1360, 1373 (Fed. Cir. 2010) (stating there is no requirement of a 9 Patent Owner further contends Petitioner admitted that it was “required to present the opinions of a person of ordinary skill in the art . . . at the time of the invention of the ’639 patent.” PO Resp. 20 (citing Ex. 1003 ¶ 15). We have reviewed the cited material and find Petitioner did not make any such admission. perfect match between an expert’s experience and the field of the art in question, provided the expert has “sufficient relevant technical experience” to testify). The Federal Circuit has explained that a person of ordinary skill in the art is a “hypothetical person postulated by § 103” that is “presumed to have . . . knowledge of all material prior art.” Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1452–53 (Fed. Cir. 1984); see also id. at 1454 (“It should be clear that that hypothetical person [of ordinary skill in the art] is not the inventor, but an imaginary being possessing ‘ordinary skill in the art’ created by Congress to provide a standard of patentability . . . .”). Thus, the proper question to ask is not whether the testifying witness is in fact such a “hypothetical person,” but rather whether the testifying witness possesses sufficient qualifications to be able to testify as to what the hypothetical person of ordinary skill in the art postulated by § 103 would have known and understood at the time of the invention. Although Dr. Chung may not have “industry” experience (Ex. 1016 ¶ 65), we find that Dr. Chung possesses sufficient education, training, and experience to provide testimony as to what a POSITA would have understood at the time of the invention, under either party’s proffered definition. See, e.g., Ex. 1011, 1–34; Ex. 1003 ¶¶ 2–5; Ex. 1016 ¶¶ 63–65 (describing Dr. Chung’s experience). For example, Dr. Chung has both a master’s degree and a doctorate in Materials Science from the Massachusetts Institute of Technology. Ex. 1003 ¶ 3. Dr. Chung has been active in capacitor research for at least 16 years, including experience in the design of single-layer capacitors, as evidenced by numerous publications. Ex. 1011; Ex. 1016 ¶¶ 64, 65. Additionally, Dr. Chung is the Founding Director of the Composite Materials Research Laboratory at the University of Buffalo, is a professor, and has taught classes in Materials Science, including teaching concepts in the design of single layer capacitors to her students. See, e.g., Ex. 1003 ¶¶ 4–5; Ex. 1016 ¶ 64. We further note that Dr. Chung is the author of Yih (Ex. 1012), which is one of the prior art references that is asserted in this proceeding. Certainly, the prior art of record in this proceeding—namely, Liebowitz, Devoe, Veater, SinghDeo, Insetta, and Yih —is indicative of the level of ordinary skill in the art. See Okajima, 261 F.3d at 1355; GPAC Inc., 57 F.3d at 1579. Moreover, to the extent Dr. Chung is less familiar with aspects” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We disagree with Patent Owner’s contention that a declarant must actually be a person of ordinary skill in the art in order to present testimony as to what a person of ordinary skill in the art would have understood at the time of the invention. See, e.g., SEB S.A. v. Montgomery Ward & Co. Inc., 594 F.3d 1360, 1373 (Fed. Cir. 2010) (stating there is no requirement of a 9 Patent Owner further contends Petitioner admitted that it was “required to present the opinions of a person of ordinary skill in the art . . . at the time of the invention of the ’639 patent.” PO Resp. 20 (citing Ex. 1003 ¶ 15). We have reviewed the cited material and find Petitioner did not make any such admission. perfect match between an expert’s experience and the field of the art in question, provided the expert has “sufficient relevant technical experience” to testify). The Federal Circuit has explained that a person of ordinary skill in the art is a “hypothetical person postulated by § 103” that is “presumed to have . . . knowledge of all material prior art.” Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1452–53 (Fed. Cir. 1984); see also id. at 1454 (“It should be clear that that hypothetical person [of ordinary skill in the art] is not the inventor, but an imaginary being possessing ‘ordinary skill in the art’ created by Congress to provide a standard of patentability . . . .”). Thus, the proper question to ask is not whether the testifying witness is in fact such a “hypothetical person,” but rather whether the testifying witness possesses sufficient qualifications to be able to testify as to what the hypothetical person of ordinary skill in the art postulated by § 103 would have known and understood at the time of the invention. Although Dr. Chung may not have “industry” experience (Ex. 1016 ¶ 65), we find that Dr. Chung possesses sufficient education, training, and experience to provide testimony as to what a POSITA would have understood at the time of the invention, under either party’s proffered definition. See, e.g., Ex. 1011, 1–34; Ex. 1003 ¶¶ 2–5; Ex. 1016 ¶¶ 63–65 (describing Dr. Chung’s experience). For example, Dr. Chung has both a master’s degree and a doctorate in Materials Science from the Massachusetts Institute of Technology. Ex. 1003 ¶ 3. Dr. Chung has been active in capacitor research for at least 16 years, including experience in the design of single-layer capacitors, as evidenced by numerous publications. Ex. 1011; Ex. 1016 ¶¶ 64, 65. Additionally, Dr. Chung is the Founding Director of the Composite Materials Research Laboratory at the University of Buffalo, is a” slip op. at 11
- Prior constructionPrior construction adoptedDecided for patent owner
“In our Decision on Institution, we construed “essentially monolithic structure” in claims 1 and 8 to mean “an essentially solid structure of materials that are sintered together” and that has “internal metallizations that create a partial boundary or seam within the structure, but because the metallizations do not cover the entire area of the dielectric layer, the ceramic materials sinter together around the edges of the metallization.” Dec. on Inst. 8–12. We disagreed with Petitioner’s argument that “essentially monolithic structure” should be interpreted broadly “to incorporate the elimination of any or all ‘boundaries/joints’ within a structure.” Id. (citing Pet. 6). Rather, we determined that the ’639 patent distinguished between a “monolithic structure,” which lacks any boundary or seam, and an “essentially monolithic structure” that possesses a partial boundary or seam. Id. at 10 (citing Ex. 1001, 5:3–19). The parties do not dispute our interpretation in their Patent Owner Response and Reply. Moreover, in consideration of the arguments and evidence developed during trial, we do not perceive any reason or evidence that compels any deviation from this interpretation. Accordingly, we adopt our previous analysis and claim interpretation of “essentially monolithic structure” for purposes of this Decision. Id. at 8–12. We further determine that for the purposes of this Decision, no other claim terms require construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (stating “only those terms need be construed that in controversy and only to the extent necessary to resolve the controversy”).” slip op. at 15
Patent outcomesUS 6,661,639 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,661,639 - Fisher & Paykel Healthcare Limited v. Resmed LimitedRehearing deniedPTAB · Aug 17, 2017 · IPR2017-00218 · APJ James J Mayberry · IPR · Rehearing
The Board denied Fisher & Paykel’s rehearing request, leaving institution denied because it found no abuse of discretion in its assessment of the claim limitation and Berthon-Jones.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision[,]” which party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). And, because Fisher seeks rehearing of our Decision on Institution, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). A request for rehearing is not an opportunity to present new arguments. See 37 C.F.R. § 42.71(d) (requiring the rehearing request to “specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply”) (emphasis added).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“the effect of the prosecution history on the scope of the claims, as substantial evidence supports our findings. We understand that prosecution disclaimer requires that a patentee make it clear “that the invention does not include a particular feature” and that, although “such disavowal can occur either explicitly or implicitly, it must be clear and unmistakable.” Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016). We are not persuaded by Fisher that ResMed’s disclaimer is limited to adjustment mechanisms that correspond to a structure that forms the engagement between a cushion component and a common frame.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable
“discretion, as the argument is inconsistent with our construction of the “fixed, non-adjustable position” claim limitations. As we indicated above, we interpret these limitations to exclude masks with structures that adjust the” slip op. at 7
- Strike new argumentNew argument disregardedDecided for patent owner
“3 Fisher’s Petition did not identify raised central structure 538 as satisfying the subject matter of the “fixed, non-adjustable position” claim limitations. See Pet. 23–25 (identifying protrusions 524 and receiving holes 526). We do not consider new arguments in a request for rehearing. See 37 C.F.R. § 42.71(d).” slip op. at 7
Claim construction§ 103 obviousnessPatents in suitUS 9,381,316 - Fisher & Paykel Healthcare Limited v. Resmed LimitedRehearing deniedPTAB · Aug 17, 2017 · IPR2017-00215 · APJ James J Mayberry · IPR · Rehearing
The Board denied Fisher’s rehearing request, leaving trial denied because Fisher did not show an abuse of discretion in the findings on the fixed, non-adjustable position limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision[,]” which party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). And, because Fisher seeks rehearing of our Decision on Institution, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). A request for rehearing is not an opportunity to present new arguments. See 37 C.F.R. § 42.71(d) (requiring the rehearing request to “specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply”) (emphasis added).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“the effect of the prosecution history on the scope of the claims, as substantial evidence supports our findings. We understand that a prosecution disclaimer requires that a patentee make it clear “that the invention does not include a particular feature” and that, although “such disavowal can occur either explicitly or implicitly, it must be clear and unmistakable.” Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016). We are not persuaded by Fisher that ResMed’s disclaimer is limited to adjustment mechanisms that correspond to a structure that forms the engagement between a cushion component and a common frame.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not reached
“discretion. First, we do not understand Fisher as making this argument in the Petition. That is, we interpret Fisher to argue in the Petition that after a user adjusts the fit of mask 510 using adjustment wheels 530 to a desired configuration, the user will not further adjust the mask, and cushion/secondary frame 514 is in a fixed, non-adjustable position relative to chassis 512. See Pet. 27. We cannot misapprehend or overlook an argument that is not made. Even if the argument as Fisher articulates here is the argument in the Petition, we are not persuaded that we overlooked Berthon-Jones disclosing the “fixed, non-adjustable position” claim limitations, as substantial evidence supports our findings. Berthon-Jones’s adjustment is not the “wiggle” that ResMed referenced in its Preliminary Response, which would be associated with manufacturing tolerances and flexible materials that may allow for some small movement between the components.4 See Prelim. Resp. 15. Instead, Berthon-Jones discloses that its adjustment wheel 530 is used to adjust the sealing force or fit of the cushion against a user’s face— that is, the reason for adjustment wheel 530 as part of the mask is to adjust the cushion relative to the frame. See Ex. 1002 ¶ 186; see also ¶ 168 (“[Figures] 41 through 53 illustrate additional embodiments which allow 4 We stress that we do not decide whether the “fixed, non-adjustable position” claim limitations would encompass a structure with the “wiggle” that ResMed referenced in its Preliminary Response, as we do not need to reach that issued in deciding this Request.” slip op. at 10
- Strike new argumentNew argument disregardedDecided for patent owner
“discretion, as the argument is inconsistent with our construction of the “fixed, non-adjustable position” claim limitations. As we indicated above, we interpret these limitations to exclude masks with structures that adjust the 3 Fisher’s Petition did not identify raised central structure 538 as satisfying the subject matter of the fixed, non-adjustable position” claim limitations. See Pet. 25–27 (identifying protrusions 524 and receiving holes 526). We do not consider new arguments in a request for rehearing. See 37 C.F.R. § 42.71(d).” slip op. at 7
Claim construction§ 102 anticipationPatents in suitUS 9,381,316 - Kayak Software Corp. / Opentable, Inc. et al. v. International Business Machines Corp.All claims unpatentablePTAB · Aug 7, 2017 · IPR2016-00609 · APJ Michelle N Wormmeester · IPR · Final written decision
Claims 1, 3, 12, 13, 15, and 18 are unpatentable as anticipated by Mellmer under § 102.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“for the first time in its Reply, even though it had an opportunity to brief this issue in its Petition. We therefore find Petitioner’s new argument in this regard waived. See Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016). Even if we were to consider Petitioner’s argument, however, we would still find it to be unpersuasive. “[C]lear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (cited at PO Resp. 25). In this case, as Patent Owner points out, “the inventors stated that the preambles of [c]laims 1, 15, and 18 limit those claims,” and they “also used the term ‘federated computing environment’ to distinguish their claims over a reference cited during prosecution.” PO Resp. 24–25; see also Ex. 1003, 14–15 (“the subject disclosure provides for a ‘runtime user account creation operation within a single-sign-on process’ within the context of a ‘federated computing environment’” and “[t]he ‘federated’ context of the subject disclosure is evident from the preamble in each independent claim”); id. at 16 (“the ‘federated computing environment’ limitations of the preamble[s] are limiting”); id. at 17 (“Ting, the alleged anticipatory prior art, is not a ‘federated’ teaching. For that reason alone, the reference cannot and does not anticipate any pending claim.”). Based on the record before us, we conclude that the term “federated computing environment” is limiting.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We do not conclude, however, that the scope of the term is limited to an affiliation of enterprises, as both parties urge. Pet. 18; PO Resp. 23. Indeed, the specification of the ’346 patent teaches that, “[i]n the context of the present invention, a federation is a set of distinct entities, such as enterprises, organizations, institutions, etc., that cooperate to provide a single-sign-on, ease-of-use experience to a user.” Ex. 1001, 10:62–64 (emphasis added). According to the specification of the ’346 patent, an entity “generally refers to an organization, an individual, or a system that operates on behalf of an organization, an individual, or another system.” Id. at 8:31–33. We recognize that the portion of the ’346 patent that the parties cite specifies enterprises, but, in light of the specification of the patent as a whole, we find this instance of “enterprises” to illustrate an example of the types of entities that may make up a federation. Compare id. at 10:62–64 (“[i]n the context of the present invention, a federation is a set of distinct entities, such as enterprises”), with id. at 1:64–2:1 (“[a] federation is a loosely coupled affiliation of enterprises”). Accordingly, we determine that, under a broadest reasonable interpretation in light of the specification of the ’346 patent, the term “federated computing environment” refers to “an environment having a loosely coupled affiliation of entities that adhere to certain standards of interoperability; the federation provides a mechanism for trust among those entities with respect to certain computational operations for the users within the federation.”” slip op. at 8
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner counters, arguing that “federated computing environment” is not limiting “because that term only appears in the preamble, which the patentee used merely to state an intended use for the claimed subject matter,” the invention of the ’346 patent “is not limited to operating in a federated computing environment,” and “[t]he claim body of each independent claim defines a structurally complete invention.” Pet. Reply 2–3. According to Petitioner, that “the applicant argued that the preamble was limiting during prosecution” is not “categorically determinative,” but, rather, should be treated as a “guidepost[]” in “deciding whether a preamble is limiting.” Id. at 4. Petitioner raises the argument as to whether the preamble is limiting for the first time in its Reply, even though it had an opportunity to brief this issue in its Petition. We therefore find Petitioner’s new argument in this regard waived. See Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016). Even if we were to consider Petitioner’s argument, however, we” slip op. at 7
- Expert testimonyOther
“above in the “Claim Construction” section, we construe the term “single sign-on operation” to mean “a process by which a user is authenticated at a first entity and subsequently not required to perform another authentication before accessing a protected resource at a second entity.” An authentication, as explained by Petitioner, refers to a “process of validating a set of credentials that are provided by a user or on behalf of a user.” Pet. Reply 8. This is supported by the ’346 patent. See Ex. 1001, 9:50–51 (providing the same definition); see also Tr. 27:24–28:2 (Patent Owner stating that there is “no real dispute on the meaning of authentication”). While we recognize that DigitalMe “will construct an accessCard, prompt the user to associate a meCard, and re-issue the post” before the user is logged into the partner site in Mellmer, (see Ex. 1008, 25:66–26:2, Fig. 34), we do not find this disclosure to be indicative of a second authentication, as Patent Owner urges, (see PO Resp. 34). For instance, we note that an accessCard in Mellmer “represent[s] the partner site.” Ex. 1008, 24:48. As Petitioner points out, Mellmer “is silent as to what information is included in the accessCard” described in the “No Account On This Site Scenario” section. Pet. Reply 12. That is, Mellmer does not teach that the accessCard in a “No Account On This Site Scenario” includes a set of credentials. See id.; see also PO Resp. 34 (citing Ex. 1008, 24:62–25:4 (describing “A Normal Scenario”), 25:9–13 (describing “A Normal Scenario”), 25:38–43 (describing “A No Access Card Scenario”), 25:63– 26:2 (describing an accessCard in “A No Account On This Site Scenario,” without describing the contents of the accessCard), 26:32–35 (describing “A Site that is not DigitalMeTM—Aware Scenario”)). Thus, based on the arguments and evidence presented, we find that constructing an accessCard representing the partner site does not constitute providing or validating a set of credentials.” slip op. at 20
Patent outcomesUS 7,631,346 unpatentableClaim construction§ 102 anticipationPatents in suitUS 7,631,346
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.