- 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 - PTAB · Sep 25, 2017 · IPR2016-00788 · APJ Neil T Powell · IPR · Final written decision
The Board held that claims 15, 18, and 20 were not shown unpatentable over Johnson or Hitt because neither reference disclosed containment walls standing on the floor.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“broadest reasonable interpretation of the disputed claim language requires that the containment walls stand “on” the floor. In the recitation “containment walls standing upwardly from said floor,” the word “from” indicates that the containment walls are disposed “on” the floor. Consistent with this, all of the various embodiments of the invention disclosed by the ’611 patent consistently show sidewalls of a rail car that stand or rest on underlying floor of the car, as Patent Owner notes. See, e.g., PO Resp. 7–12; Ex. 1001, Figs. 1–10. Patent Owner also relies on the testimony of Mr. Long, in discussing the meaning of “standing upwardly from.” See, e.g., PO Resp. 17–21 (citing Ex. 2118 ¶¶ 101–102, 144–161). Specifically, Mr. Long testifies that a person of ordinary skill in the art would have recognized that in the ’611 patent, the term “standing” is used in “its positional sense,” citing, for instance, to a dictionary definition of “standing” as “to rest or remain upright on a base or lower end.” Ex. 2118 ¶ 145 (citing Ex. 2112, 7). Mr. Long’s testimony and the underlying support for that testimony shed favorable light on the meaning of “standing upwardly from” that is urged by Patent Owner.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“containment walls standing upwardly from said floor.” Pet. 24–28. The Petition notes that Johnson discloses floor 26 and side sheet 16. Id. at 24– 25. The Petition contends that “[b]ased on the vertical direction of the ‘side frame assembly,’ . . . , a [person of ordinary skill in the art] would have understood Johnson to teach that the containment walls stand ‘upwardly from said floor.’” Id. at 25. Showing the uncorrected versions of Figures 1 and 2 of Johnson, the Petition elaborates that “[t]his is further shown, e.g., in Fig. 2, where wall 16 is generally perpendicular with respect to the floor 26.” Id. at 25–26 (citing Ex. 1106, Fig. 2; Ex. 1103 ¶ 132). These statements do not indicate, much less prove, that Johnson discloses a containment wall that stands on a floor. Observing the vertical direction of side frame 12 and the perpendicular orientation of side sheet 16 to floor 26 does not establish that side frame 12 or side sheet 16 is disposed on floor 26. The cited testimony of Mr. Miller notes that Figure 2 shows “side sheet 16 is shown as standing normal to the floor.” Ex. 1103 ¶ 132. This too facially does not indicate, much less prove, that side sheet 16 is disposed on floor 26. slip op. at 13
- Strike new argumentNew argument disregardedDenied
“Petitioner’s citation of Johnson’s Figure 5 in the Reply is unavailing. When addressing the claim limitations “containment walls standing upwardly from said floor,” the Petition does not cite Figure 5 of Johnson. See Pet. 24–28. This section of the Petition cites paragraphs 54–56, 130– 132, 134, and 135 of Mr. Miller’s testimony (id.), and none of this testimony cites to or addresses Figure 5 of Johnson, either (see Ex. 1103 ¶¶ 54–56, 130–132, 134–135). Furthermore, it is not apparent that Figure 5 of Johnson shows the same embodiment as Figure 2; Johnson identifies Figure 5 as a cross-section of Figure 4, which Johnson introduces as “a partial side elevation view of a gondola railcar having a bolster.” Ex. 1106, 3:7–8. We determine that Petitioner’s citation of Johnson’s Figure 5 in the Reply is unavailing because it constitutes an improper new argument. In that respect, we do not regard Petitioner’s new reliance on Johnson’s Figure 5 in an attempt to address a deficiency raised by Patent Owner in its Patent Owner Response as constituting a proper response envisioned by our rules. See 37 C.F.R. § 42.23(b). Furthermore, even if Petitioner’s citation of Figure 5 were a proper response, it would not demonstrate, by a preponderance of the evidence, that Johnson discloses the claimed relationship. We are persuaded that, without any other supporting evidence, Figure 5 of Johnson does not show the relationship between containment walls and a floor clearly enough to support, by a preponderance of the evidence, Petitioner’s contention that Johnson discloses containment walls that stand on a floor.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“For the foregoing reasons, Petitioner has not persuaded us that Johnson discloses containment walls that stand on the floor, as required by independent claim 15. Additionally, Petitioner has not asserted that it would have been obvious to modify Johnson’s railcar to have such a configuration, much less provided evidence and reasoning persuading us that it would have been obvious to do so. See, e.g., Pet. 24–28. Accordingly, Petitioner has not demonstrated by a preponderance of the evidence that claims 15, 18, and 20 are unpatentable over Johnson.” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,757,611 - Freightcar America, Inc. v. National Steel Car, LimitedNo claims unpatentablePTAB · Sep 22, 2017 · IPR2016-00787 · APJ Josiah C Cocks · IPR · Final written decision
Claims 1, 2, 7–10, and 13 were not shown unpatentable over Hitt; claims 7–10 and 13 were not shown unpatentable over White because the floor structure limitation was not established.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“NSC, however, has now taken the opportunity to articulate more thorough reasoning, and provide a more substantive basis, for its position that the proposed meaning of “standing upwardly of” as “standing on and rising in an upward direction” is also the broadest reasonable construction of the term in the context of the ’600 patent. The ’600 patent depicts various embodiments of its disclosed invention. See, e.g., Ex. 1001, Figures 1–10. In reviewing those depictions, and as noted by NSC (see, e.g., PO Resp. 7–9), they consistently show sidewalls of a rail car that stand or rest on the underlying flooring of the car. NSC also relies on the testimony of its declarant, Mr. Jack Long, in discussing the meaning of “standing upwardly of.” See, e.g., PO Resp. 12– 16 (citing Ex. 2018 ¶¶ 160–165, 167–178). Specifically, Mr. Long testifies that a person of ordinary skill in the art would have recognized that in the ’600 patent the term “standing” is used in “its positional sense,” citing, for instance, to a dictionary definition of “standing” as “to rest or remain upright on a base or lower end.” Ex. 2018 ¶ 164 (citing Ex. 2013, 5). Mr. Long’s testimony and the underlying support for that testimony shed favorable light on the meaning of “standing upwardly of” that is urged by NSC.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“exclusively on Hitt’s description of its “30-Ton Metal Wagon.” Pet. 22–23. More particularly, FreightCar takes the position that the above-noted claim requirement concerning sidewalls “standing upwardly of” is shown in the two Figures of Hitt designated Figures 6188 and 6189. Id. Those figures, however, are not a model of clarity when it comes to ascertaining the relationship of the sidewalls and the flooring of a rail car. We observe also that FreightCar seemingly bases its challenge to claims 1 and 2 on the premise that sidewalls that extend on the sides of the flooring are within the scope of those claims. Indeed, FreightCar’s own declarant, Mr. Keith Miller, provides testimony to that effect, i.e., that the sidewalls of the rail car depicted in Hitt’s Figures 6188 and 6189 do not rest or stand on the flooring or the car, but rather, lie to the sides of the flooring. See Ex. 1003 ¶ 124. As discussed above, we now conclude that claims 1 and 2 require a sidewall that stands on the flooring of a rail car. NSC maintains that such a configuration is not shown in the portions of Hitt on which FreightCar relies in its Petition. PO Resp. 22–31. NSC also relies on the testimony of its declarant, Mr. Long, in advocating that Hitt’s 30-Ton Metal Wagon embodiment does not meet the sidewall and flooring configuration required by claims 1 and 2. Id. (citing Ex. 2018 ¶¶ 195–208). We find Mr. Long’s testimony explaining the disclosure of Hitt’s Figures 6188 and 6189 credible. Although FreightCar does contend, as a part of its Reply to NSC’s Patent Owner Response, that Hitt’s 30-Ton Wagon includes “stanchions” as a part of a peripheral sidewall, we are not persuaded on that basis of the unpatentability of claims 1 and 2. It is not apparent readily that such position was taken by FreightCar as a part of its Petition, nor does FreightCar explain adequately why, even if true, such a circumstance constitutes a peripheral sidewall standing upwardly of flooring, as is required by claims 1 and 2 of the ’600 patent. Having thoroughly considered the record that has been developed at trial, we conclude that FreightCar’s Petition does not establish, by a preponderance of the evidence, that claims 1 and 2 are unpatentable over Hitt. More specifically, we are not persuaded that Hitt’s “30-Ton Metal Wagon” embodiment sets forth a “peripheral sidewall standing upwardly of said flooring” as required by claim 1. Accordingly, we are not persuaded that Hitt anticipates that claim, or dependent claim 2, nor does FreightCar offer any adequate explanation as to why the claims would have been obvious in view of Hitt.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“exclusively on Hitt’s description of its “30-Ton Metal Wagon.” Pet. 22–23. More particularly, FreightCar takes the position that the above-noted claim requirement concerning sidewalls “standing upwardly of” is shown in the two Figures of Hitt designated Figures 6188 and 6189. Id. Those figures, however, are not a model of clarity when it comes to ascertaining the relationship of the sidewalls and the flooring of a rail car. We observe also that FreightCar seemingly bases its challenge to claims 1 and 2 on the premise that sidewalls that extend on the sides of the flooring are within the scope of those claims. Indeed, FreightCar’s own declarant, Mr. Keith Miller, provides testimony to that effect, i.e., that the sidewalls of the rail car depicted in Hitt’s Figures 6188 and 6189 do not rest or stand on the flooring or the car, but rather, lie to the sides of the flooring. See Ex. 1003 ¶ 124. As discussed above, we now conclude that claims 1 and 2 require a sidewall that stands on the flooring of a rail car. NSC maintains that such a configuration is not shown in the portions of Hitt on which FreightCar relies in its Petition. PO Resp. 22–31. NSC also relies on the testimony of its declarant, Mr. Long, in advocating that Hitt’s 30-Ton Metal Wagon embodiment does not meet the sidewall and flooring configuration required by claims 1 and 2. Id. (citing Ex. 2018 ¶¶ 195–208). We find Mr. Long’s testimony explaining the disclosure of Hitt’s Figures 6188 and 6189 credible. Although FreightCar does contend, as a part of its Reply to NSC’s Patent Owner Response, that Hitt’s 30-Ton Wagon includes “stanchions” as a part of a peripheral sidewall, we are not persuaded on that basis of the unpatentability of claims 1 and 2. It is not apparent readily that such position was taken by FreightCar as a part of its Petition, nor does FreightCar explain adequately why, even if true, such a circumstance constitutes a peripheral sidewall standing upwardly of flooring, as is required by claims 1 and 2 of the ’600 patent. Having thoroughly considered the record that has been developed at trial, we conclude that FreightCar’s Petition does not establish, by a preponderance of the evidence, that claims 1 and 2 are unpatentable over Hitt. More specifically, we are not persuaded that Hitt’s “30-Ton Metal Wagon” embodiment sets forth a “peripheral sidewall standing upwardly of said flooring” as required by claim 1. Accordingly, we are not persuaded that Hitt anticipates that claim, or dependent claim 2, nor does FreightCar offer any adequate explanation as to why the claims would have been obvious in view of Hitt.” slip op. at 15
- ExcludeOther
“D. Motion to Exclude NSC filed a Motion to Exclude various exhibits offered by FreightCar in support of its Petition. Specifically, NSC seeks to exclude, in part or in total, exhibits 1003, 1007, 1011, 1012, 1014, and 1022. In reaching our determination in this Decision that FreightCar’s Petition does not establish the unpatentability of any of claims 1, 2, 7–10 and 13, we either: (1) did not rely on any of the content that NSC seeks to exclude, or; (2) evaluated that content in NSC’s favor. We conclude that the circumstances here do not require us to consider the substantive merits of NSC’s Motion to Exclude, and, instead, we dismiss that Motion as moot.” slip op. at 23
Patent outcomesUS 7,461,600 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,461,600 - Vision Industries Group, Inc. v. Mighton Products LimitedAll claims unpatentablePTAB · Sep 20, 2017 · IPR2016-00792 · APJ Robert L Kinder · IPR · Final written decision
Claims 1–50 are unpatentable: claims 1–10, 13–20, 23–36, and 38–50 are anticipated by Adams; the remaining claims are obvious over the stated combinations. The motion to amend is denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The levels of ordinary skill proposed by the parties do not differ significantly, as suggested by Mr. Carlson’s testimony that his opinions would be the same under either party’s proposal. See id. Both parties’ proposed descriptions require the equivalent of an undergraduate (four year) degree in mechanical technology, and both require at least two years of industry experience (although Patent Owner proposes three years). For purposes of this Decision, we adopt Petitioner’s proposed definition as more representative, but note that our analysis would be the same under either definition.” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed petitioner constructionDecided for petitioner
“Ex. 1001, 15:44–57. The function, according to Petitioner, is “selectively preventing movement of a first member that has a first surface substantially aligned in a first plane, relative to a second member that has a second surface substantially aligned in a second plane.” Pet. 15 (quoting claim 39). Petitioner contends that Figures 1 and 2 of the ’461 patent identify “a pivoting tab” as the structure performing the claimed function of preventing movement of the upper sash relative to the lower sash. Id.; Ex. 1007 ¶ 37. In our Decision on Institution, we agreed with Petitioner’s contention that “a pivoting tab” performs the claimed function. Dec. on Inst. 7–8. In its Response, Patent Owner has not challenged our determination. We do not perceive any reason or evidence that compels any deviation from our original interpretation. Accordingly, we adopt our previous analysis and conclusion as to the “means for selectively preventing movement of a first member.”” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“independent claims 1, 15, 26, and 39 should mean either “an element that exerts a restraining force against a biasing force” or, alternatively, “a latching mechanism.” Pet. 17. Patent Owner does not offer a proposed construction for this term. The term “restraining element” is not used in the ’461 patent, apart from the claims. The surrounding context of the claim language suggests the term is meant to be used interchangeably with the “latching mechanism” identified in the Specification. See Ex. 1001, 1:22– 32, 8:1–3. Compare id. at 1:32 (“The latching means may comprise magnetic means.”), with id. at 13:34–35 (“wherein the restraining element comprises a magnet”). Therefore, we construe “restraining element” to mean a latching mechanism, which “may be provided by any suitable releasable latching means.” Id. at 8:1–3.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Patent Owner’s first contention is based, in part, on an interpretation that would require the tab and restraining element be distinct components – an interpretation we have rejected for the reasons set forth above. As explained above, the Specification of the ’461 patent makes clear that the tab may include the latch. Adams also discloses a configuration where the tab (D) includes a latch (d3). See Pet. Reply 18 (“the fact that the tab D includes a latch d3 doesn’t make the latch indistinct from the tab”). Thus, we disagree that Petitioner has taken an inconsistent or changed position in its analysis.” slip op. at 23
Patent outcomesUS 8,881,461 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,881,461 - PTAB · Sep 12, 2017 · IPR2016-00502 · APJ James J Mayberry · IPR · Rehearing
The Board denied Valeo’s rehearing request, leaving its final written decision that claims 1–13 were unpatentable on grounds other than the Nester obviousness grounds unchanged.
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).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“such as the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for improvement, an express motivation to combine references may not be necessary under the Court’s flexible analysis. See KSR Int’l Co., 550 U.S. at 417. Valeo fails, however, to characterize its obviousness position as falling under these cases, nor do we read Valeo’s position as advocating a simple substitution or applying a known technique to a reference ready for improvement. See Pet. 41–42; Ex. 1002 ¶¶ 121–123. Instead, Valeo advocates substituting in Nester’s over-tuned pendulum absorber for Sudau’s even-tuned compensation flywheel, without explaining how such a substitution would be “simple.” See Ex. 1002 ¶ 120. Although Nester’s pendulum absorber may represent a “known technique,” Valeo fails to adequately explain why Sudau’s torque converter is so apparently “ready for improvement” that a person having ordinary skill in the art would need no further motivation to make the substitution.” slip op. at 13
- Expert testimonyPetitioner expert discountedDecided for patent owner
“unavailing. As an initial point, Valeo fails to identify where it relied on Dr. Shaw’s deposition testimony specifically quoted at page 6 of the Request in a motion, opposition, or reply, and we cannot discern independently where Valeo relied on this testimony. See 37 C.F.R. § 42.71(d). We cannot overlook facts that were not presented to us. Further, we find that Dr. Shaw’s testimony that Nester’s over-tuning addresses multiple effects is from the perspective of a co-author—Dr. Shaw is not testifying about what the actual reference discloses, but instead what the over-tuning may address based on his knowledge of the underlying testing. See Ex. 2013, 292:11– 297:24 (containing deposition testimony about the underlying testing and results, not specific disclosures in Nester). Our analysis in the Final Written Decision weighed already that evidence of record and found that Nestor’s over-tuning addressed non-linear effects only, and we are unpersuaded that the above-identified testimony affects dispositively the outcome of that weighing.” slip op. at 8
§ 103 obviousnessPatents in suitUS 8,161,740 - Whatsapp Inc. v. Triplay, Inc.No claims unpatentablePTAB · Aug 28, 2017 · IPR2016-00718 · APJ Josiah C Cocks · IPR · Final written decision
Claims 6, 7, and 15 were not shown unpatentable under § 103 over Coulombe, Bellordre, and Friedman because the petitioner did not adequately explain its motivation to combine.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We do not perceive any meaningful difference between the parties’ definitions of the technical field of the required experience. For example, both experts testify that the level of ordinary skill entails a bachelor’s degree in electrical engineering or computer science, and at least two years of experience in designing and implementing messaging systems. Ex. 1102 ¶ 16; Ex. 2102 ¶ 31. Based on the complete record, including our review of the ’677 patent and the types of problems and solutions described in the ’677 patent and cited prior art, we agree with both parties’ assessments of the level of ordinary skill in the art and our analysis would be the same using either definition. As noted, we have also considered the cited references as representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the level of ordinary skill in the art may be evidenced by the cited references themselves).” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“While Mr. Klausner makes broad statements that it would be “self- evident” to a skilled artisan or layperson to add Bellordre’s video messaging to Coulombe’s message adaptation system, we, nonetheless, observe that Mr. Klausner’s conclusion does not rest upon any reasoning or explanation in his declaration to support this position. Thus, we weigh Mr. Klausner’s testimony accordingly. See In re Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Moreover, we disagree with Mr. Klausner’s testimony that requiring additional explanation would “ignore common sense.” See Ex. 1102 ¶ 34. Although “common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not,” Leapfrog Enters., Inc. v. Fisher–Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007), the determination is made not after observing what the inventor actually did, but in light of the state of the art before the invention was made, see Outside the Box Innovations, LLC v. Travel Caddy, Inc., 695 F.3d 1285, 1298 (Fed. Cir. 2012). Here, on this record, Mr. Klausner does not address why it would have been “self-evident,” or, more importantly, common sense for a skilled artisan to modify Coulombe’s message adaptation system with Bellordre’s video content. Further, Mr. Klausner’s appeal to the “layperson” is also unavailing as Mr. Klausner does not direct us to any support in the record that a layperson would have this understanding of messaging systems. See Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360–61 (Fed.Cir.2011) (providing that the inquiry under § 103 is not whether the claimed invention is “sufficiently simple to appear obvious to judges after the discovery is finally made”). We recognize that the Board has subject matter expertise, but the Board cannot accept general conclusions about what is “self-evident” or “common sense” as a replacement for documentary evidence for core factual findings in a determination of patentability. See K/S Himpp v. Hear- Wear Technologies, LLC, 751 F.3d 1362, 1366 (Fed. Cir. 2014); In re Zurko, 258 F.3d 1379, 1385–86 (Fed. Cir. 2001).” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Court criticized a rigid approach to determining obviousness based on the disclosures of individual prior art references that were already on the record, with little recourse to the knowledge, creativity, and common sense that an ordinarily skilled artisan would have brought to bear when considering combinations or modifications. KSR, at 415–22. However, in relying upon common sense, our reviewing court has cautioned “that references to ‘common sense’—whether to supply a motivation to combine or a missing limitation—cannot be used as a wholesale substitute for reasoned analysis and evidentiary support.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (2016) (emphasis added). Based on the complete record before us, we determine that Petitioner has not provided the necessary reasoned analysis and evidentiary support for the assertion that the incorporation of a video object for adaptation and delivery by Coulombe’s system would have been “common sense.” Neither the Petition nor Mr. Klausner’s declaration testimony explains how the asserted combination of Bellordre and Coulombe would be “self-evident,” either to a person of ordinary skill in the art or, alternatively, to a “lay person” as Mr. Klausner asserts. Further, Petitioner has not explained with reasoning or supporting evidence why a person of ordinary skill in the art, or a layperson, would consider video to be “more powerful” than text or still photos. Rather, Petitioner (and Mr. Klausner) concludes this to be true without providing any explanation as to why video is “more powerful,” or at a minimum, what “more powerful” means in the context of the field of technology and art at issue.” slip op. at 17
Patent outcomesUS 8,874,677 not shown unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,874,677 - Whatsapp Inc. v. Triplay, Inc.No claims unpatentablePTAB · Aug 28, 2017 · IPR2016-00717 · APJ Frances L Ippolito · IPR · Final written decision
Petitioner did not prove claims 1, 2, 11, 13, 14, 16, 17, 20, and 21 unpatentable as obvious over Coulombe, Bellordre, and Friedman.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“We do not perceive any meaningful difference between the parties’ definitions of the technical field of the required experience. For example, both experts testify that the level of ordinary skill entails a bachelor’s degree in electrical engineering or computer science, and at least two years of experience in designing and implementing messaging systems. Ex. 1002 ¶ 16; Ex. 2002 ¶ 32. Based on the complete record, including our review of the ’677 patent and the types of problems and solutions described in the ’677 patent and cited prior art, we agree with both parties’ assessments of the level of ordinary skill in the art and our analysis would be the same using either definition. As noted, we have also considered the cited references as representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the level of ordinary skill in the art may be evidenced by the cited references themselves).” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“While Mr. Klausner makes broad statements that it would be “self- evident” to a skilled artisan or layperson to add Bellordre’s video messaging to Coulombe’s message adaptation system, we, nonetheless, observe that Mr. Klausner’s conclusion does not rest upon any reasoning or explanation in his declaration to support this position. Thus, we weigh Mr. Klausner’s testimony accordingly. See In re Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Moreover, we disagree with Mr. Klausner’s testimony that requiring additional explanation would “ignore common sense.” Although “common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not,” Leapfrog Enters., Inc. v. Fisher–Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007), the determination is made not after observing what the inventor actually did, but in light of the state of the art before the invention was made, see Outside the Box Innovations, LLC v. Travel Caddy, Inc., 695 F.3d 1285, 1298 (Fed. Cir. 2012). Here, on this record, Mr. Klausner does not address why it would have been “self-evident,” or, more importantly, common sense for a skilled artisan to modify Coulombe’s message adaptation system with Bellordre’s video content. Further, Mr. Klausner’s appeal to the “layperson” is also unavailing as Mr. Klausner does not direct us to any support in the record that a layperson would have this understanding of messaging systems. See Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360–61 (Fed.Cir.2011) (providing that the inquiry under § 103 is not whether the claimed invention is “sufficiently simple to appear obvious to judges after the discovery is finally made”). We recognize that the Board has subject matter expertise, but the Board cannot accept general conclusions about what is “self-evident” or “common sense” as a replacement for documentary evidence for core factual findings in a determination of patentability. See K/S Himpp v. Hear- Wear Techs., LLC, 751 F.3d 1362, 1366 (Fed. Cir. 2014); In re Zurko, 258 F.3d 1379, 1385–86 (Fed. Cir. 2001).” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Court criticized a rigid approach to determining obviousness based on the disclosures of individual prior art references that were already on the record, with little recourse to the knowledge, creativity, and common sense that an ordinarily skilled artisan would have brought to bear when considering combinations or modifications. KSR, at 415–22. However, in relying upon common sense, our reviewing court has cautioned “that references to ‘common sense’—whether to supply a motivation to combine or a missing limitation—cannot be used as a wholesale substitute for reasoned analysis and evidentiary support.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (2016) (emphasis added). Based on the complete record before us, we determine that Petitioner has not provided the necessary reasoned analysis and evidentiary support for the assertion that the incorporation of a video object for adaptation and delivery by Coulombe’s system would have been “common sense.” Neither the Petition nor Mr. Klausner declaration testimony explains how the asserted combination of Bellordre and Coulombe would be “self-evident,” either to a person of ordinary skill in the art or, alternatively, to a “lay person” as Mr. Klausner asserts. Further, Petitioner has not explained with reasoning or supporting evidence why a person of ordinary skill in the art, or a layperson, would consider video to be “more powerful” than text or still photos. Rather, Petitioner (and Mr. Klausner) concludes this to be true without providing any explanation as to why video is “more powerful,” or at a minimum, what “more powerful” means in the context of the field of technology and art at issue. Additionally, even assuming Petitioner’s general proposition to be true—that it is “self-evident” television is more powerful than text or photos, it bears mentioning that Petitioner has not explained how this sentiment demonstrates the “common sense” or “common knowledge” that a skilled artisan would have considered because Petitioner’s assertions are too general and fail to take into consideration the specific references, field of technology, and art at issue, which are directed to the design and implementation of systems for sending and receiving messages over a communications network, such as the Internet. In this context, Petitioner provides no reasoning beyond the bare statement that the asserted combination is “self-evident.” Moreover, Petitioner presumes that which is “self-evident” need not be explained. However, this is not the standard by which obviousness is shown. Indeed, “assumptions about common sense cannot substitute for evidence thereof.” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006).” slip op. at 17
- Strike new argumentOther
“We first observe that Petitioner does not rely on the MIME or SIMPLE standards for its obviousness challenge in the Petition. As a general matter, a reply is not an opportunity to supplement reasoning or evidence that is absent from the Petition. Nevertheless, even considering Petitioner’s arguments in its Reply, we are not persuaded these arguments are sufficient to demonstrate by a preponderance of the evidence that the challenged claims are unpatentable. Based on the complete record here, Petitioner’s arguments that the references are analogous and the asserted combination is technically trivial, essentially “say no more than that a skilled artisan, once presented with the two references, would have understood that they could be combined. And that is not enough: it does not imply a motivation to pick out those two references and combine them to arrive at the claimed invention.” Pers. Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 993–94 (Fed. Cir. 2017). While the references need not explicitly provide a reason for the asserted substitution, Petitioner must, nevertheless, explain why a person of ordinary skill in the art would have made the combination. See Belden Inc. v. Berk–Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”).” slip op. at 23
Patent outcomesUS 8,874,677 not shown unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,874,677 - Duncan Parking Technologies, Inc. v. Ips Group Inc.Rehearing grantedPTAB · Aug 18, 2017 · IPR2016-00067 · APJ Josiah C Cocks · IPR · Rehearing
The Board granted IPS’s rehearing request and held claims 1–5 and 7–10 not shown unpatentable as anticipated by King ’054 under § 102(e).
RulingsRehearing decision- RehearingRehearing, grantedGranted
“without prior authorization from the Board.” 37 C.F.R. § 42.71(d). The party requesting rehearing has the burden of showing that the decision from which rehearing is sought should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” Id.” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“communicated to the inventors of King ’054 by Mr. King. In that respect, we observe the following: (1) it is undisputed that Mr. King and the D+I inventors invented the substantive content that became claims 8 and 10 of the ’310 patent; (2) Mr. King is a common inventor as between each of the ’310 patent and King ’054; (3) the record reflects that there was frequent and numerous collaborative exchanges between Mr. King and the other inventors of King ’310 (i.e., the D+I inventors); and (4) those exchanges occurred prior to the filing of the application that became King ’054. See, e.g., Exs. 2018–31, 2034–42.” slip op. at 6
- Strike new argumentNew argument disregardedOther
“Response to IPS’s Request for Rehearing, provides little, if any, basis undermining the above-noted inference. DPT’s attempt, as a part of its Response, to belatedly seek rehearing of our Final Written Decision as to claims 1–5, 7, and 9 of the ’310 patent is both untimely and inadequately supported on the present record.4 Indeed, all the Response does is inappropriately seek rehearing of our Final Written Decision as to claims 1– 5, 7, and 9 of the ’310 patent, and does not follow our instruction of being responsive to the subject of the Request for Rehearing, i.e., the anticipation of dependent claims 8 and 10. See Paper 32, 2 (“The panel would like to hear from DPT as to the content of IPS’s Request for Rehearing. Accordingly, the panel authorizes . . . DPT to file a reply to IPS’s Request for Rehearing.”).” slip op. at 6
§ 102 anticipationPatents in suitUS 7,854,310
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.