- Avita Medical Limited v. Renovacare Sciences Corp.Institution deniedPTAB · Dec 18, 2017 · IPR2017-01243 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution on all grounds, finding the petition relied on the same or substantially the same prior art previously considered by the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Our discretion pursuant to § 325(d) involves a balance between several competing interests. “On the one hand, there are the interests in conserving the resources of the Office and granting patent owners repose on issues and prior art that have been considered previously.” Fox Factory, Inc. v. SRAM, LLC, Case IPR2016-01876, slip op. at 7 (PTAB Apr. 3, 2017) (Paper 8). “On the other hand, are the interests of giving petitioner the opportunity to be heard and correcting any errors by the Office in allowing a patent—in the case of an inter partes review—over prior art patents and printed publications.” Id.” slip op. at 5
Discretionary denialPatents in suitUS 9,610,430 - Icon Health & Fitness, Inc. v. Nautilus, Inc.Rehearing deniedPTAB · Oct 27, 2017 · IPR2017-00495 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution because Petitioner did not show a reasonable likelihood of prevailing on any challenge to claims 1–16.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Pursuant to 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 request must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d).” slip op. at 3
NonePatents in suitUS 8,323,155 - Icon Health & Fitness, Inc. v. Nautilus, Inc.Rehearing deniedPTAB · Oct 27, 2017 · IPR2017-00493 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution because the Petition failed to identify corresponding structure and show the prior art disclosed the same or equivalent structures.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Pursuant to 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 We did not undertake an analysis to determine whether the equivalent structure was shown in the prior art because Petitioner failed to do so in the first instance: “By not identifying a corresponding structure, material, or acts in the ’542 patent specification, Petitioner does not show where that structure, material, or acts or its equivalent is disclosed by Maresh-I.” Dec. 18 (citing 37 C.F.R. § 42.104(b)(4) (“The petition must specify where each element of the claim is found in the prior art . . . relied upon.”)). 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 request must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d).” slip op. at 3
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“In particular, we first construed “right means,” “left means,” “second end portion support,” “first support,” “second support,” “first member,” and “second member” as invoking § 112, ¶ 6, because none of the terms has a sufficiently definite meaning as a name for structure. Dec. 7–15. Second, with respect to independent claims 1, 46, 75, and 86, we found that Petitioner did not identify corresponding structure, material, or acts in the specification for performing each of the recited functions. See id. at 17–18 (discussing Maresh-I), 19–21 (discussing Stearns). With respect to independent claims 91, 94, 97, and 100, we found that even if we accepted Petitioner’s identification of the alleged corresponding structure, material, or acts, Petitioner’s analysis failed to show that the prior art structures were the same or equivalent. Id. at 18 (discussing Maresh-I), 20–21 (discussing Stearns). Rather, Petitioner’s analysis focused entirely on the functional language of these claim elements without identifying and addressing the corresponding structure. Id. at 18 (discussing Maresh-I), 20–21 (discussing Stearns).1” slip op. at 2
- BurdenNot shown unpatentable
“We disagree. Petitioner did not do either. First, Petitioner did not identify any portion of the specification describing corresponding structure in the Petition. Second, there is no mention of tracks or swing arms in the discussion of Maresh-I and Stearns at pages 14, 15, and 40 of the Petition, let alone any argument that the structures identified in either reference are equivalent. See Pet. 14, 15, 40. Accordingly, we did not misapprehend or overlook whether Petitioner complied with these requirements for means-plus-function claim terms; Petitioner did not. Petitioner’s Alleged Analysis and Evidence Regarding the Same or Equivalent Structures” slip op. at 7
Claim constructionPatents in suitUS 7,341,542 - Icon Health & Fitness, Inc. v. Nautilus, Inc.Rehearing deniedPTAB · Oct 27, 2017 · IPR2017-00494 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution because the Petition did not explain how the prior-art structures were the same as or equivalent to the claimed structures.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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 request must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“focuses on the functional language of these claim limitations and fails to explain how the structures of Maresh-I and Stearns are the same as, or equivalent to, those identified in the ’219 patent. Dec. 15–16. For example, Petitioner’s discussion of Maresh-I equates the claimed “first means” and “second means” with Maresh-I’s “radially displaced pins of cranks 760,” but fails to make any argument explaining how these are the same or equivalent structures. See Pet. 13–14. Petitioner also points to paragraphs 37 and 90 of Mr. Ganaja’s declaration where he testifies that Maresh-I’s radially displaced pins are crank arms and that a connection between rollers 2023 and cranks 2020 is the crank arm in Stearns. Req. Reh’g 5–6 (discussing Ex. 1006 ¶ 37), 6 (discussing Ex. 1006 ¶ 90). There is no question that Mr. Ganaja’s testimony in these paragraphs addresses the issues that we found lacking in the Petition. The problem for Petitioner, however, is that the Petition itself did not include these arguments equating the structures as Mr. Ganaja did. Citing to these paragraphs of Mr. Ganaja’s declaration without providing any explanation of the significance thereof in the Petition itself is insufficient. See 37 C.F.R. § 42.6(3) (“Arguments must not be incorporated by reference from one document into another document.”). See also DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.”).” slip op. at 4
- BurdenDecided for patent owner
“focuses on the functional language of these claim limitations and fails to explain how the structures of Maresh-I and Stearns are the same as, or equivalent to, those identified in the ’219 patent. Dec. 15–16. For example, Petitioner’s discussion of Maresh-I equates the claimed “first means” and “second means” with Maresh-I’s “radially displaced pins of cranks 760,” but fails to make any argument explaining how these are the same or equivalent structures. See Pet. 13–14. Petitioner also points to paragraphs 37 and 90 of Mr. Ganaja’s declaration where he testifies that Maresh-I’s radially displaced pins are crank arms and that a connection between rollers 2023 and cranks 2020 is the crank arm in Stearns. Req. Reh’g 5–6 (discussing Ex. 1006 ¶ 37), 6 (discussing Ex. 1006 ¶ 90). There is no question that Mr. Ganaja’s testimony in these paragraphs addresses the issues that we found lacking in the Petition. The problem for Petitioner, however, is that the Petition itself did not include these arguments equating the structures as Mr. Ganaja did. Citing to these paragraphs of Mr. Ganaja’s declaration without providing any explanation of the significance thereof in the Petition itself is insufficient. See 37 C.F.R. § 42.6(3) (“Arguments must not be incorporated by reference from one document into another document.”). See also DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.”). Accordingly, we did not misapprehend or overlook discussion in the Petition regarding these structures.” slip op. at 4
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“In particular, we first construed “first means” and “second means” as invoking § 112, ¶ 6, as proposed by Petitioner and Patent Owner. Dec. 9. Second, we found that even if we accepted Petitioner’s identification of the alleged corresponding structure, material, or acts, Petitioner’s analysis failed to show that the prior art structures were the same or equivalent. Id. at 15– 16 (discussing Maresh-I and Stearns). Rather, Petitioner’s analysis focused entirely on the functional language of these claim elements without addressing the corresponding structure. Id.” slip op. at 2
Claim constructionPatents in suitUS 7,632,219 - Icon Health & Fitness, Inc. v. Nautilus, Inc.Rehearing deniedPTAB · Oct 27, 2017 · IPR2017-00490 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied rehearing, finding no overlooked or misapprehended matter in its § 112, ¶ 6 construction and its determination that Petitioner’s prior-art analysis was deficient.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Pursuant to 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 request must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d).” slip op. at 3
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“In particular, we first construed “second portion support” as invoking § 112, ¶ 6, because it did not have a sufficiently definite meaning as a name for structure. Dec. 7–10. Second, we found that Petitioner did not identify corresponding structure, material, or acts in the specification for performing the recited function of guiding the second portions of the right and left foot engagement members to follow a forward-rearward reciprocating motion in response to the user moving the user’s feet with striding steps during the striding exercise as the right and left crank arms reciprocally lift and lower the first portions of the right and left foot engagement members. Id. at 11–12 (quoting Ex. 1001, 22:65–23:4). Third, we determined that Petitioner’s analysis was deficient because it did not identify where the same structure, material, or acts or their equivalents were found in the prior art.1 Id. at 12–13.” slip op. at 2
- BurdenNot shown unpatentable
“§ 112, ¶ 6, because it did not have a sufficiently definite meaning as a name for structure. Dec. 7–10. Second, we found that Petitioner did not identify corresponding structure, material, or acts in the specification for performing the recited function of guiding the second portions of the right and left foot engagement members to follow a forward-rearward reciprocating motion in response to the user moving the user’s feet with striding steps during the striding exercise as the right and left crank arms reciprocally lift and lower the first portions of the right and left foot engagement members. Id. at 11–12 (quoting Ex. 1001, 22:65–23:4). Third, we determined that Petitioner’s analysis was deficient because it did not identify where the same structure, material, or acts or their equivalents were found in the prior art.1 Id. at 12–13.” slip op. at 2
Claim constructionPatents in suitUS 6,689,019 - Edwards Lifesciences Corporation v. Boston Scientific Scimed, Inc.Institution deniedPTAB · Oct 25, 2017 · IPR2017-01296 · APJ Amanda F Wieker · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of proving the means-plus-function limitations unpatentable over the asserted prior art.
RulingsInstitution decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“Claim limitations that include the term “means” or “means for” are presumed to invoke 35 U.S.C. § 112 ¶ 6. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348–49 (Fed. Cir. 2015) (en banc in relevant part) (“The converse presumption remains unaffected: ‘use of the word ‘means’ creates a presumption that § 112, ¶ 6 applies.’”); see also Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703 (Fed. Cir. 1998); Greenberg v. Ethicon Endo–Surgery, Inc., 91 F.3d 1580, 1584 (Fed. Cir. 1996) (“[Use] of the term ‘means’ has come to be so closely associated” slip op. at 8
- BurdenInstitution denied meritsInstitution denied
“(c) Identification of Corresponding Structure In proceedings before this Board, our Rules require that if a challenged claim contains a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6, Petitioner is required to construe the limitation and to “identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3). Here, the Petition fails to identify any portion of the ’543 patent Specification that describes the structure, material, or acts that correspond to the functions recited in the above-referenced limitations. See Pet. 19; see also 37 C.F.R. § 42.6(a)(3). It is not this panel’s responsibility to identify the portions of the Specification upon which it believes Petitioner may rely to support its positions with respect to 35 U.S.C. § 112 ¶ 6. Our Rules place this burden on Petitioner, so that the panel may evaluate effectively the challenged claims vis-à-vis the asserted prior art, as discussed below.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“limitation is unpatentable over the asserted prior art, Petitioner must show that the structure that corresponds to a claimed function, or its equivalent, is found in, or obvious over, the applied prior art. See Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299–1300 (Fed. Cir. 2009) (“It is firmly established in our precedent that a structural analysis is required when means-plus-function limitations are at issue; a functional analysis alone will not suffice.”) (emphases added). In this case, Petitioner’s failure to construe the claims in accordance with our Rules is determinative. By failing to identify structure, material, or acts in the ’543 patent Specification that correspond to the claimed functions, Petitioner necessarily has not shown where that structure, material, acts, or their equivalents are disclosed in the applied prior art. Compare Pet. 19, with id. at 32 (discussing “expandable inflatable means”), 32–33 (discussing “mounting and retaining means for receiving the stent”), 38 (discussing “means for inflating the balloon”), 47– 48, 52, 61–63, 67, 74, 77. For these reasons, Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of independent claims 1 or 19 based on any of the asserted grounds of unpatentability. Petitioner’s challenges to dependent claims 2, 3, 6–12, 20, 21, and 24–29 similarly fail for the same reasons. III. CONCLUSION For the foregoing reasons, we determine Petitioner has not demonstrated a reasonable likelihood it would prevail in establishing the unpatentability of the challenged claims of the ’543 patent. IV. ORDER Upon consideration of the record before us, it is: ORDERED that the Petition is denied as to all challenged claims, and no trial is instituted.” slip op. at 11
Claim constructioncites PhillipsPatents in suitUS 6,007,543 - Edwards Lifesciences Corporation v. Boston Scientific Scimed, Inc.Institution deniedPTAB · Oct 25, 2017 · IPR2017-01304 · APJ Amanda F Wieker · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted ground.
RulingsInstitution decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“recite the term “means.” See Ex. 1001, 26:5–6, 26:10–13 (“expandable inflation means . . . for expansion of the stent”; “mounting and retaining means . . . to provide a securement for the stent”). With respect to these limitations, Petitioner contends that these limitations do not invoke 35 U.S.C. § 112 ¶ 6. Pet. 22. Petitioner, however, does not discuss the presumption associated with use of the word “means” in these limitations, and does not provide a single citation to intrinsic or competent extrinsic evidence to suggest that the presumption is unwarranted in this case. Instead, Petitioner simply incorporates by reference a letter between counsel in the co-pending district court litigation. Id. (citing Ex. 1007). Even if Petitioner’s incorporation by reference were proper, but cf. 37 C.F.R. § 42.6(a)(3), the cited letter also fails to explain how or why applicable intrinsic or extrinsic evidence warrants deviating from the presumption that use of the term “means” invokes 35 U.S.C. § 112 ¶ 6. Although this letter suggests that the parties may agree that § 112 ¶ 6 should not apply to these limitations, a non-binding agreement between parties does not constitute persuasive evidence and does not suspend our Rules. See infra Section II.A.3.a. Further, claim construction, and whether § 112 ¶ 6 applies, is a legal determination made based on a hierarchy of evidence–– intrinsic evidence being the most persuasive. In addition to stating that 35 U.S.C. § 112 ¶ 6 does not apply, the Petition also provides constructions for these limitations. Pet. 22. However, the proposed constructions simply reiterate the functions recited by the claims. For example, Petitioner construes “expandable inflation means . . . for expansion of the stent” as “a structure capable of being expanded and inflated.” Id. Petitioner’s contentions in this regard fail to explain how or why Petitioner believes any applicable evidence overcomes the presumption that use of the term “means” invokes § 112 ¶ 6. It is not this panel’s charge to divine the reasoning or justification for Petitioner’s position, without any guiding explanation from Petitioner. Accordingly, absent any persuasive rebuttal, we presume that “expandable inflation means . . . for expansion of the stent” and “mounting and retaining means . . . to provide a securement for the stent” invoke 35 U.S.C. § 112 ¶ 6.” slip op. at 10
- BurdenInstitution denied meritsDenied
“challenged claim contains a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6, Petitioner is required to construe the limitation and to “identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3). Here, the Petition fails to identify any portion of the ’558 patent Specification that describes the structure, material, or acts that correspond to the functions recited in the above-referenced limitations. See Pet. 22; see also 37 C.F.R. § 42.6(a)(3). It is not this panel’s responsibility to identify the portions of the Specification upon which it believes Petitioner may rely to support its positions with respect to 35 U.S.C. § 112 ¶ 6. Our Rules place this burden on Petitioner, so that the panel may evaluate effectively the challenged claims vis-à-vis the asserted prior art, as discussed below. B. Asserted Grounds of Unpatentability To show that a challenged claim containing a means-plus-function limitation is unpatentable over the asserted prior art, Petitioner must show that the structure that corresponds to a claimed function, or its equivalent, is found in, or obvious over, the applied prior art. See Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299–1300 (Fed. Cir. 2009) (“It is firmly established in our precedent that a structural analysis is required when means-plus-function limitations are at issue; a functional analysis alone will not suffice.”) (emphases added). In this case, Petitioner’s failure to construe the claims in accordance with our Rules is determinative. By failing to identify the structure, material, or acts in the ’558 patent Specification that correspond to the claimed functions, Petitioner necessarily has not shown where that structure, material, acts, or their equivalents are disclosed in the applied prior art. Compare Pet. 22, with id. at 33–34 (discussing “expandable inflation means . . . for expansion of the stent”), 34–35 (discussing “mounting and retaining means . . . to provide a securement for the stent”), 47–49, 55–57. For these reasons, Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of independent claim 1 based on any of the asserted grounds of unpatentability. Petitioner’s challenges to dependent claims 2, 9, 14, and 20–22 similarly fail for the same reasons.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“limitation is unpatentable over the asserted prior art, Petitioner must show that the structure that corresponds to a claimed function, or its equivalent, is found in, or obvious over, the applied prior art. See Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299–1300 (Fed. Cir. 2009) (“It is firmly established in our precedent that a structural analysis is required when means-plus-function limitations are at issue; a functional analysis alone will not suffice.”) (emphases added). In this case, Petitioner’s failure to construe the claims in accordance with our Rules is determinative. By failing to identify the structure, material, or acts in the ’558 patent Specification that correspond to the claimed functions, Petitioner necessarily has not shown where that structure, material, acts, or their equivalents are disclosed in the applied prior art. Compare Pet. 22, with id. at 33–34 (discussing “expandable inflation means . . . for expansion of the stent”), 34–35 (discussing “mounting and retaining means . . . to provide a securement for the stent”), 47–49, 55–57. For these reasons, Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of independent claim 1 based on any of the asserted grounds of unpatentability. Petitioner’s challenges to dependent claims 2, 9, 14, and 20–22 similarly fail for the same reasons. III. CONCLUSION For the foregoing reasons, we determine Petitioner has not demonstrated a reasonable likelihood it would prevail in establishing the unpatentability of the challenged claims of the ’558 patent. IV. ORDER Upon consideration of the record before us, it is: ORDERED that the Petition is denied as to all challenged claims, and no trial is instituted.” slip op. at 12
Claim constructioncites PhillipsPatents in suitUS 6,203,558 - Adidas AG v. Nike, Inc.No claims unpatentablePTAB · Oct 19, 2017 · IPR2016-00922 · APJ James B Arpin · IPR · Final written decision
Petitioner failed to prove claims 1–9, 11–19, and 21 unpatentable as obvious over Reed and Nishida because it did not adequately explain why a skilled artisan would combine their teachings.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“appropriate factors identified by our reviewing court and utilized by other panels to assess the level of ordinary skill in the art. Id. at 17–18. We agree with Petitioner that it is not necessary to consider every factor or to weigh the factors equally in order to assess the level of ordinary skill in the art. Reply 2 (quoting In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)). Here, we may rely on Petitioner’s declarant’s testimony (Ex. 1003 ¶ 34) and the teachings of the prior art to evaluate Petitioner’s assessment of the level of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). In particular, Reed and Nishida identify the types of problems encountered in the art prior art solutions to these problems, and the sophistication of the technology. E.g., Ex. 1006, 1:13–55; Ex. 1009, 1:10– 36; see, e.g., Ex. 1007, 1:8–32, 2:12–64; Ex. 1008, 1:11–54; Ex. 1010, 145– 160; see also Ex. 1010, Preface (“The aim of this book is to combine in a single volume the fundamental principles of weft and warp knitting in such a manner that its contents are useful to readers in education, industry or commerce. It thus [fulfills] the long felt need for a comprehensive up-to-date textbook explaining this important sector of textile technology.”).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“unitary construction” means “a textile element having a unitary construction and having a first area and a second area.” Pet. 6. As Petitioner notes, this is the construction that this panel gave to the same term appearing in the substitute claims of the ’011 patent. adidas AG v. Nike, Inc., Case IPR2013- 00067, slip op. at 16–17 (PTAB Apr. 28, 2014) (Paper 60). We further note that the ’749 patent’s Specification provides that “[a]s defined for purposes of the present invention, unitary construction is intended to express a configuration wherein portions of a textile element are not joined together by seams or other connections, as depicted with textile element 40 in FIG. 8.” Ex. 1001, 6:42–46 (emphasis added); see IPR2013-00067, Ex. 1002, 6:41–46 (identical disclosure). The ’011 patent and the ’749 patent share the same Specification (apart from their claims), neither party contested our construction of this term in the appeal of our decision in the inter partes review of the claims of the ’011 patent, and Patent Owner does not contest Petitioner’s proposed construction of this term in this proceeding. Therefore, in view of the express definition of the phrase “unitary construction” in the Specification of the ’749 patent, we adopt Petitioner’s proposed construction as the broadest reasonable interpretation for this term. See Tr. 20:5–13, 37:11–17.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“2. “wide-tube circular knitting machine” (Claims 9 and 19) We determine that the broadest reasonable interpretation of the term “wide-tube circular knitting machine” is “a circular knitting machine forming body garment sized, tubular textile structures, including those having a diameter that ranges from 10 inches to 20 inches.” See Inst. Dec. 9–11. Neither party contests this construction. See Tr. 20:5–13, 37:11–17.” slip op. at 13
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“8 Patent Owner contends that Reed is not analogous art. PO Resp. 34–36. In particular, Patent Owner contends that Reed is not from the same field of endeavor as the challenged claims and that Reed’s teachings are not reasonably pertinent to the particular problem with which the recited methods are involved. Id. at 34–35. Because Reed is directed to the manufacture of all types of garments, including footwear (Reply 12–13; see Ex. 1006, 1:33–44), and Reed is related directly to preparation of garments layouts from a knitted textile structure (Reply 14–15; see Ex. 1006, 2:29– 35), we are persuaded that Reed is analogous art to the challenged claims.” slip op. at 18
Patent outcomesUS 8,266,749 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,266,749 - Adidas AG v. Nike, Inc.No claims unpatentablePTAB · Oct 19, 2017 · IPR2016-00921 · APJ James B Arpin · IPR · Final written decision
Petitioner failed to prove claims 1–13 unpatentable as obvious over Reed and Nishida because it did not show a reason to combine their teachings.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Initially, Patent Owner contends that Petitioner has failed to consider appropriate factors identified by our reviewing court and utilized by other panels to assess the level of ordinary skill in the art. Id. at 12–13. We agree with Petitioner that it is not necessary to consider every factor or to weigh the factors equally in order to assess the level of ordinary skill in the art. Reply 2 (quoting In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)). Here, we may rely on Petitioner’s declarant’s testimony (Ex. 1003 ¶ 34) and the teachings of the prior art to evaluate Petitioner’s assessment of the level of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). In particular, Reed and Nishida identify the types of problems encountered in the art prior art solutions to these problems, and the sophistication of the technology. E.g., Ex. 1006, 1:13–55; Ex. 1009, 1:10– 36; see, e.g., Ex. 1007, 1:8–32, 2:12–64; Ex. 1008, 1:11–54; Ex. 1010, 145– 160; see also Ex. 1010, Preface (“The aim of this book is to combine in a single volume the fundamental principles of weft and warp knitting in such a manner that its contents are useful to readers in education, industry or commerce. It thus [fulfills] the long felt need for a comprehensive up-to-date textbook explaining this important sector of textile technology.”). Patent Owner contends that the level of ordinary skill in the art is “low” (PO Resp. 13), but it is not clear whether Patent Owner further contends that Petitioner’s assessment is deficient because Petitioner fails to argue that a person possessing such a “low” level of ordinary skill in the art also would have “experience using knitting technologies to create knitted footwear uppers” (id. at 13–14) or whether the inclusion of such skill would raise the “low” level of skill in the art (id. at 14). Alternatively, Patent Owner may merely be contending that Petitioner’s declarant fails to qualify as a person of ordinary skill in the art. Id. at 14 (“If it was too ‘dangerous’ for Mr. Holden with his nearly forty years of experience, a person with just a “few years of experience” would not have had any knitting experience, let alone experience using knitting technologies to create uppers.”); see Tr. 62:17–22. Patent Owner is not required to help us assess the level of ordinary skill in the art and does not do so here. See PO Resp. 18 (“Petitioner may criticize NIKE for not submitting an expert declaration. But it is Petitioner’s burden to prove unpatentability; it is not NIKE’s burden to prove patentability.”). In response to Patent Owner’s contentions, Petitioner argues that the level of ordinary skill in the art is not low and that hands-on knitting experience is not required. Reply 2–3. Petitioner further argues Patent Owner has not required knitting experience in its previous assessment with respect to a related patent of the level of ordinary skill in the art. Id. (citing IPR2013-00067, Ex. 2010 ¶ 52). Based on the record before us and to the extent necessary, we again adopt Petitioner’s assessment of a person of ordinary skill in the relevant art. Inst. Dec. 8 n.3.” slip op. at 10
- Expert testimonyPetitioner expert creditedMixed
“document.” Reply 3 (quoting Ex. 2004, 12:7–11); see Ex. 2004, 12:12– 13:16. Declarants often have assistance in authoring their declarations. See Square, Inc. v. Think Computer Corp., Case CBM2014-00159, slip op. at 26–27 (PTAB Nov. 27, 2015) (Paper 47) (“the mechanics of declaration preparation is ‘a waste of time, both for the witness and the Board’”). Mr. Holden was not required to be the sole author of his declaration. Rather, the relevant issue regarding the preparation of Mr. Holden’s declaration is whether Mr. Holden adopted the content of his declaration as his own. Here, he has. See Ex. 1003 ¶¶ 3, 4, 209. As Patent Owner suggests, we weigh Mr. Holden’s declaration testimony in light of his testimony on cross-examination. Although Mr. Holden indicated that he was unable to define or was unfamiliar with certain terms during cross-examination, he did name references, including Spencer (Ex. 1010), that he could and would consult to obtain the answers to specific questions. Tr. 63:20–64:13. Moreover, Patent Owner’s counsel acknowledged that persons of ordinary skill in the art (or declarants) do not have to have all of the knowledge relevant to their testimony in their heads and that they are allowed to consult references, as appropriate. Id. at 63:20– 64:2. Although Patent Owner notes that Mr. Holden apparently was not aware of Spencer until this inter partes review (see Ex. 2004, 77:1–3; Tr. 64:1–6), his learning of and relying on a new reference alone is not sufficient reason to disregard, i.e., give no weight to, Mr. Holden’s testimony. Further, the issue here is not whether Mr. Holden is a person of ordinary skill in the art, but rather whether his testimony is of value to the panel. See Tr. 64:15– 18. Thus, as indicated in the discussion below, we determine the appropriate weight to give to Mr. Holden’s testimony.” slip op. at 31
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“8 Patent Owner contends that Reed is not analogous art. PO Resp. 29–31. In particular, Patent Owner contends that Reed is not from the same field of endeavor as the challenged claims and that Reed’s teachings are not reasonably pertinent to the particular problem with which the recited methods are involved. Id. at 29–30. Because Reed is directed to the manufacture of all types of garments, including footwear (Reply 12–14; see Ex. 1006, 1:33–44), and Reed is related directly to preparation of garments layouts from a knitted textile structure (Reply 14–15; see Ex. 1006, 2:29– 35), we are persuaded that Reed is analogous art to the challenged claims.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“i. Failure of Proof Petitioner bears the burden of proving by a preponderance of the evidence that the challenged claims are unpatentable. This includes demonstrating by a preponderance of the evidence that a person of ordinary skill in the art would have had reason to combine the teachings of Reed and Nishida to achieve the methods recited in the challenged claims. As noted above, Petitioner argues that a person of ordinary skill in the art would have had at least three reasons to combine the teachings of Reed and Nishida to achieve the methods recited in the challenged claims. Pet. 12–14; see Tr. 10:12–11:12. First, Petitioner argues that, because Reed teaches that its methods are applicable to “all types of garments” (Ex. 1006, 5:56–57 (emphasis added); see Ex. 1003 ¶ 131), a person of ordinary skill in the art would have had reason to apply the teachings of Reed to the processes and shoe parts of Nishida. Pet. 13 (citing Ex. 1003 ¶ 133). Second, Petitioner argues that, because both Reed and Nishida teach the advantages of reducing cost through the use of computer-controlled knitting machines, a person of ordinary skill in the art would have had reason to combine their teachings. Pet. 13 (citing Ex. 1003 ¶¶ 134–135). Third, Petitioner argues that a person of ordinary skill in the art would have had reason to apply Reed’s methods for producing textile elements, from which to produce garments, to produce Nishida’s shoe upper patterns. Id. at 13–14; see KSR, 550 U.S. at 417. However, none of these reasons or any other reason identified by Petitioner addresses the differences between Reed and Nishida, specifically pre-seaming.” slip op. at 34
Patent outcomesUS 7,814,598 not shown unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,814,598 - FMC Technologies, Inc. v. Onesubsea IP UK LimitedSome claims unpatentablePTAB · Oct 11, 2017 · IPR2016-00907 · APJ Michelle N Wormmeester · IPR · Final written decision
Claims 1, 10–12, 17–19, 21–23, 25–29, 31–35, 38, 39, and 41 are unpatentable; claims 36 and 37 were not shown unpatentable.
RulingsFinal written decision- Expert testimonyOther
“Owner now urges. Even Patent Owner’s expert admitted that the term “complete” is an “arbitrary” term that adds nothing “about what [to] decide is going to be an assembly and what’s not going to be an assembly.” Ex. 1015, 80:1–5, cited in Pet. Reply 4. As such, Patent Owner’s addition of the term “complete” sheds no light on how a skilled artisan would have understood the relationship of parts that make up an “assembly.” We reject Patent Owner’s attempt now to construe the term more narrowly than it did in the district court action. Accordingly, we construe “assembly” as “a multipart device.”” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“Owner now urges. Even Patent Owner’s expert admitted that the term “complete” is an “arbitrary” term that adds nothing “about what [to] decide is going to be an assembly and what’s not going to be an assembly.” Ex. 1015, 80:1–5, cited in Pet. Reply 4. As such, Patent Owner’s addition of the term “complete” sheds no light on how a skilled artisan would have understood the relationship of parts that make up an “assembly.” We reject Patent Owner’s attempt now to construe the term more narrowly than it did in the district court action. Accordingly, we construe “assembly” as “a multipart device.”” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“that these discrete components are not a diverter assembly.” PO Resp. 32. As support, Patent Owner points to Mr. Herrmann’s testimony that Kelly’s line 20 is part of a “production discharge line.” Id. at 32–33 (citing Ex. 2005, 248:13–249:2). Patent Owner also points to Petitioner’s explanation in its Petition that “[l]ine 20 connects from the well production string to production flowline body or collet body 22.” Id. at 33 (citing Pet. 8); see also id. (“collet body 22 is an independent component consisting of two flow passages that are connected to the production flowlines 20 and 24”). That line 20 is part of a production discharge line or that it connects from the well production string to collet body 22 does not preclude collet body 22 and line 20 from being a diverter assembly. Indeed, as discussed above, we find that collet body 22 changes the flow path of the fluid in opposite directions, thereby providing, together with line 20, “a multipart device that changes the course or direction of a fluid’s current flow path.” See also Ex. 2006 ¶ 83 (Patent Owner’s expert testifying that “[t]he production discharge line is simply a flowline that takes fluid from the tree and, in the case of Kelly, takes the fluid to a choke installed on the flowline”). Accordingly, Patent Owner’s argument here also does not adequately rebut Petitioner’s persuasive evidence and argument that Kelly discloses a “diverter assembly.”” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner must provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). In that regard, Petitioner further argues that “[o]ne of skill in the art would have modified ‘subsea choke assembly 26’ of Kelly to include one or more of a pressure sensor, temperature sensor or flow sensor, or to substitute ‘subsea choke assembly 26’ with ‘production module 61,’ as taught by Fenton.” Pet. 26– 27. According to Petitioner, “[m]odifying Kelly’s subsea choke assembly by adding one or more temperature sensors, pressure sensors, or flow meters as taught by Fenton would provide information related to fluid flow through the assembly and allow more precise control of the choke to achieve desired flow characteristics.” Id. at 27. Petitioner relies on Mr. Herrmann’s declaration testimony as support for its argument. Id. at 27–28 (citing Ex. 1003 ¶¶ 32–33). Petitioner also argues that “a person of ordinary skill would have modified Kelly’s subsea apparatus in a second manner by substituting the entire ‘subsea choke assembly 26’ of Kelly with the entire ‘production module 61’ of Fenton,” indicating that “[s]uch a modification would be a simple substitution . . . and would provide the advantages of the additional functionality present in Fenton’s module.” Id. at 28. Based on the record before us, we are persuaded by Petitioner’s proffered reasoning for modifying Kelly’s choke assembly to include Fenton’s temperature sensors, pressure sensors, or flow meters to allow for more precise control of the choke. We also are persuaded by Petitioner’s proffered reasoning for substituting Kelly’s choke assembly with Fenton’s production module. Thus, we find that Petitioner has provided adequately “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” See Kahn, 441 F.3d at 988.” slip op. at 47
Patent outcomesUS 8,573,306 mixedClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,573,306
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.