- Sony Interactive Entertainment LLC v. Quantum Imaging LLCSome claims unpatentablePTAB · Dec 6, 2024 · IPR2023-00954 · APJ James J Mayberry · IPR · Final written decision
Claims 1, 3, 4, and 7–9 are unpatentable over Angles under §103; claims 5 and 6 were not shown unpatentable over Angles.
RulingsFinal written decision- Expert testimonyOther
“prosecution history and the amendment changing “held at” to “accessible at,” testimony upon which Patent Owner relies to support its position. Specifically, Dr. Medvidović testifies that a person having ordinary skill in the art would have understood the two phrases to be synonymous because, 1) the amendment was not made to overcome a prior art reference, 2) the applicant did not make a statement disclaiming that “being accessible at” does not encompass “being held at,” and 3) the examiner did not object to the amendment as exceeding the scope of the Specification. See Ex. 2005 ¶ 34. We find that Dr. Medvidović’s conclusion is not supported by his reasoning. First, an amendment made not to overcome a prior art reference does not mean an amendment that does not change the scope of a claim. An applicant is free to amend a claim at any time during prosecution, even an amendment that may expand the scope of a claim (one made not to overcome a prior art rejection). Second, whether “being accessible at” encompasses “being held at” is not the issue—because the scope of one term encompasses the scope of another term does not make the two terms” slip op. at 26
- ExcludeDenied
“III. MOTION TO EXCLUDE EVIDENCE Patent Owner moves to exclude Exhibits 1017–1020, 1026, and 1027,” slip op. at 83
- Skill levelOther
“B. Level of Ordinary Skill in the Art The level of skill in the art is “a prism or lens” through which we view” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Accordingly, we conclude that the plain and ordinary meaning of the” slip op. at 27
Patent outcomesUS 8,458,028 mixedClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,458,028 - Ykk Corporation v. 3M Innovative Properties Co.Some claims unpatentablePTAB · Sep 13, 2021 · IPR2020-00699 · APJ Matthew S Meyers · IPR · Final written decision
Claims 1–11 and 13–20 are unpatentable as obvious; claim 12 was not shown unpatentable. The revised contingent motion to amend proposing claims 28–30 was denied.
RulingsFinal written decision- BurdenFwd mixedMixed
“Written Decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. As explained below, we conclude that Petitioner has shown by a preponderance of the evidence that claims 1–11 and 13–20 of the ’833 patent are unpatentable, but has not shown that claim 12 of the ’833 patent is unpatentable. We also determine that Petitioner has met the burden to show, by a preponderance of the evidence on this trial record that, all the proposed claims in the revised motion to amend, including independent claim 28 and dependent claims 29 and 30, as set forth in Patent Owner’s Revised Contingent Motion to Amend, are unpatentable. Accordingly, for the reasons given below, we conclude that claims 1–11 and 13–20 are unpatentable and should be canceled. Petitioner has also shown by a preponderance of the evidence that all of the proposed substitute claims that are the subject of Patent Owner’s Revised Contingent Motion to Amend are unpatentable.” slip op. at 3
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“RMTA Opp. 2 (emphasis omitted). In fact, the ’833 patent itself provides additional evidence that other differences may affect the resulting shear strength. More particularly, the ’833 patent discloses that “shear performance is unexpectedly improved upon stretching the thermoplastic backing and decreasing its thickness even though the density of the upstanding elements is reduced by half.” Ex. 1001, 16:17–21. For these reasons, and the reasons discussed above in Section II.D.2., we find there is no credible evidence that the alleged unexpected results are attributable to the claimed combination.” slip op. at 112
- Expert testimonyPetitioner expert creditedDecided for petitioner
“In response to Dr. Cakmak’s conclusion that the data in the ’833” slip op. at 39
- Obviousness (§103) › Objective indicia / secondary considerations › Unexpected resultsObjective indicia no nexusDecided for petitioner
“whether Mr. Kline accounted for how other mechanical fastener parameters13 would affect resulting shear strength, Mr. Kline testified that he either: (1) did not consider the parameter (see, e.g., Ex. 1024, 115:4–8), or (2) considered the parameter but did not discuss it in his declaration (see, e.g., Ex. 1024, 115:9–120:13). We find Mr. Kline’s conclusion regarding “a correlation—or surprising lack thereof” to be conclusory, given that it fails to consider other parameters that may affect shear strength, and as such, insufficient to support Patent Owner’s position. See, e.g., In re Lindner, 457 F.2d 506, 508 (CCPA 1972) (“This court has said previously that mere lawyers’ arguments unsupported by factual evidence are insufficient to establish unexpected results. . . . Likewise, mere conclusory statements in” slip op. at 40
Patent outcomesUS 10,165,833 mixed§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,165,833 - Micron Technology, Inc. v. Innovative Memory Systems, Inc.Some claims unpatentablePTAB · Apr 1, 2020 · IPR2016-00330 · APJ Kevin W Cherry · IPR · Remand
On remand, claims 21, 22, 27, 32, 33, and 38 remain unpatentable; claims 1, 2, 5, 6, 11, 12, 15, 23, 43, 44, 47, and 48 were not shown unpatentable because Tanaka lacks the required …
RulingsRemand decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Thus, the zones contain blocks that are already assigned for address translation. As discussed above, the properly construed remaining language in the claim then requires a controller that can adjust boundaries between zones of assigned blocks “such that blocks from one logical zone are shifted to another logical zone.” Id. Given this analysis and the Federal Circuit’s construction, we agree with Patent Owner that “adjusting blocks that are not yet assigned to logical zones to replace defective blocks that are already assigned to logical zones is not enough to satisfy the claim limitations.” PO Br. 2. Indeed, Federal Circuit noted that our original analysis found that “Tanaka discloses taking” slip op. at 13
- ExcludeMotion to exclude, deniedDenied
“A motion to exclude must explain why the evidence is not admissible (e.g., relevance or hearsay), but may not be used to challenge the sufficiency of the evidence to prove a particular fact. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,765, 48,767 (Aug. 14, 2012). While a motion to exclude may raise issues related to admissibility of evidence, it is not an opportunity to file a sur-reply, and also is not a mechanism to argue that a reply contains new arguments or relies on evidence necessary to make out a prima facie case. Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2013–00004, Paper 53, at 62 (PTAB Mar. 13, 2014) (Final Written Decision). Patent Owner’s Motion to Exclude contains such improper arguments, and is in the nature of a sur-reply. Moreover, for the reasons discussed above (see supra Section II.B.2), we find Petitioner’s arguments involving “spare” blocks unpersuasive. For these reasons, Patent Owner’s Motion to Exclude Paragraph 24 of Dr. Subramanian’s Reply Declaration as presenting new arguments is denied.” slip op. at 21
Patent outcomesUS 6,901,498 mixed§ 103 obviousnessPatents in suitUS 6,901,498 - Van Der Hoeven Horticultural Projects B.V. v. Houweling Nurseries Oxnard, Inc.Some claims unpatentablePTAB · Jun 6, 2018 · IPR2017-00476 · APJ Jeremy M Plenzler · IPR · Final written decision
Claim 29 is unpatentable over Reisinger under § 103; claims 1–28 were not shown unpatentable because Reisinger’s ducting is not an end gable and the proposed combination lacked a sufficient rationale.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“and 2 above, the “gabled end” is a region at an end wall of the greenhouse separated from the growing section by a partition. The ’617 patent also explains that “the greenhouse can be arranged without a gabled end,” and provides an example of such an arrangement as one where “the first louver [is] arranged over the fans with the cooling mechanism located at the fans such that ambient air can be pulled directly into the tubes with the air passing the cooling mechanism for additional cooling” and “[p]ipes . . . provide an air passageway between the second vent and the fans during the mode when air from within the crop section is to be recycled.” Ex. 1001, 9:33–41 (emphases added). As noted above, in such arrangements, a direct flow path is provided between first vent 24/first louver 30 to draw ambient air into the system and piping provides a flow path from second vent 34/second louver 36 for air recirculation from growing section 16. We find that “piping,” as used in the ’617 patent, is ducting, as that term is used in the art. Consistent with that finding, Patent Owner’s declarant Mr. Turkewitsch distinguishes ducting from structure such as a plenum or a chamber. See, e.g., Ex. 1031 53:22–55:10. Accordingly, we determine that the alternate example from the ’617 patent noted above discloses use of a ducted system in place of gabled end 14 for air flow. Based on the Specification, therefore, we find that ducting or other piping is not considered an “end gable” in the ’617 patent. As discussed further below, for purposes of this decision, we do not need to determine the precise requirements of the term “end gable” in the claims in order to determine that Petitioner has failed to establish unpatentability of the claims including that term because we at least determine that, even under the broadest reasonable interpretation, an “end gable” does not include ducting.” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Petitioner contends that Reisinger’s fresh air inlet 2, for example, corresponds to the “one or more vents” and flap 10 corresponds to the “one or more mechanisms selectively moveable to cooperate with said one or more vents to control air flow through said one or more vents.” Pet. 64–65 (referencing discussion of similar limitations in claim 1 discussed on pages 35–40 of the Petition). Petitioner explains that Reisinger’s climate control system also meets the additional limitations directed to operation of the “climate control system” in claim 29. Id. (referencing discussion of similar limitations in claim 1 discussed on pages 40–44 of the Petition). We are persuaded by those contentions, which Patent Owner does not dispute.10 With respect to any requirement that the claim has regarding a roof and sidewalls, generally, we are also persuaded by Petitioner’s contentions in connection with those features. See, e.g., Pet. 32 (citing Ex. 1002 ¶¶ 86– 88). Petitioner explains, for example, that “a POSA would have understood Reisinger to disclose them because a greenhouse was known to include a ceiling, and Reisinger’s disclosed function of smoothly adjusting the ratio of fresh air and recirculated air would not work unless the air inlets 1 and 2 were enclosed on the sides.” Id. Patent Owner does not dispute those contentions, which, as stated above, we find persuasive.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Reisinger’s greenhouse and climate control system, because . . . Landstrom is in the same field of endeavor as Reisinger,” “there would have been a reasonable and predictable expectation of success to a POSA in combining the teachings of Reisinger and Landstrom to incorporate Landstrom’s end gable chamber into Reisinger,” and “incorporating Landstrom’s end gable chamber into Reisinger’s greenhouse and climate control system including vents, louver and airflow modes does not change the principle of operation of either component.” Id. at 79–81. Patent Owner disputes whether Landstrom teaches an “end gable” or an “end portion,” and contends that Petitioner has failed to establish that one skilled in the art would have combined Landstrom’s teachings asserted by Petitioner in connection with those features with Reisinger. PO Resp. 66– 72, 74–75. Even accepting Petitioner’s contentions that Landstrom teaches an “end gable” and an “end portion” as required by the claims, Petitioner has failed to establish sufficiently that one skilled in the art would have found it obvious to include those features from Landstrom in Reisinger’s system. Sufficient rationale for combing features from multiple references requires more than those references merely being in the same field of endeavor and that the combination would have had a reasonable expectation of success and not change the principle of operation. See Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011) (“obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention”). We are lacking any, let alone sufficient, rationale from Petitioner in this proceeding.” slip op. at 19
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“obviousness in Patent Owner’s Response fails to address any relation of the claim elements, or even any particular claim, to that evidence. See PO Resp. 76–80. Nevertheless, even if we were to assume some nexus, that nexus appears to be between Patent Owner’s evidence and the features of claims 1 and 17, rather than those of claim 29. For example, in its discussion of copying, Patent Owner asserts “the ModulAir design has the same ‘corridor’ (or ‘end gable’) design as that of the Ultra Clima®.” Id. at 78. As noted above, claim 29 recites an “end portion,” rather than the “end gable” recited in claims 1 and 17. Moreover, Patent Owner presents evidence of similar designs, rather than actual copying. See, e.g., id. (“the designs are almost identical”). “[C]opying requires the replication of a specific product.” Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004). That products are similar is not persuasive evidence of copying. See Iron Grip, 392 F.3d at 1325 (“Not every competing product that arguably falls within the scope of a patent is evidence of copying. Otherwise every infringement suit would automatically confirm the nonobviousness of the patent.”). With respect to industry praise, we note that evidence, too, is only relevant when it is directed to the merits of the invention claimed. See Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311 (Fed. Cir. 2006). Patent Owner fails to provide any connection between the particular features of claim 29 and the alleged industry praise. Nevertheless, even if we were to assume sufficient nexus had been established by Patent Owner, when we weigh all of the evidence, for and against patentability, we determine that the preponderance of the evidence weighs in favor of unpatentability of claim 29. As explained above, we are persuaded that Reisinger, itself, in a single embodiment, teaches each of the features found in claim 29, other than expressly describing a roof and sidewalls. As also explained above, however, we are persuaded that one skilled in the art would readily appreciate that greenhouses include a roof and sidewalls, which Patent Owner does not dispute. Accordingly, Patent Owner’s evidence does not outweigh Petitioner’s evidence of obviousness.” slip op. at 16
Patent outcomesUS 8,707,617 mixedClaim construction§ 103 obviousnessPatents in suitUS 8,707,617
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