- PTAB · Dec 22, 2016 · DER2016-00022 · APJ Joni Y Chang · DER · Order
The Board denied institution because Shukh had no pending claim substantially the same as the Respondents’ claimed invention or the invention allegedly disclosed to them.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“is required to show that the petitioner has at least one claim that is: (1) the same or substantially the same as the respondent’s claimed invention; and (2) the same or substantially the same as the invention disclosed to the respondent. In the instant Petition, Petitioner asserts that claim 19 of Petitioner’s” slip op. at 3
NonePatents in suitUS 9,853,053 - Nu Mark LLC v. Fontem Holdings 1, B.V.Institution deniedPTAB · Dec 15, 2016 · IPR2016-01309 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution on all challenged claims under § 325(d), finding the Brooks and Whittemore § 103(a) ground substantially the same as art and arguments previously considered by the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“For the foregoing reasons, we determine that the content of Brooks is the same or substantially the same as the disclosures in the EP Publication and the ’875 patent. A comparison of Brooks, the EP Publication, and the ’875 patent demonstrates that the smoking article described in the EP Publication and the flavor delivery article described in the ’875 patent are the same in all material respects as the smoking article described in Brooks.” slip op. at 11
Discretionary denialPatents in suitUS 8,863,752 - Genband US LLC / Genband Management Services Corp. v. Metaswitch Networks Ltd.Some claims unpatentablePTAB · Dec 15, 2016 · IPR2015-01457 · APJ Jameson Lee · IPR · Final written decision
Claims 2–5, 8, 9, 15–18, and 22–24 are unpatentable as obvious over Ejzak and Cisco or Intel; claim 10 was not shown unpatentable over either combination.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“First, the above-reproduced figure does not appear in the Specification of the ’640 patent. Rather, it is a creation of the Patent Owner. The figure creates the impression that a “part” necessarily is a “device.” Patent Owner, however, does not provide adequate support for such a narrow reading of 14 “part.” Although a “device” is a “part” of a telecommunications network, that does not mean a “part” has to be a “device.” Even Dr. Akl, Patent Owner’s expert, testified only that a “device” is a “part” of a telecommunications network and not that a “part” of a telecommunications network has to be a “device.” Ex. 2006 ¶ 56. Second, the figure also creates the impression that neither a domain nor a region would identify a device. But Patent Owner does not provide adequate support for such a narrow reading of “domain” and “region.” In that regard, Dr. Akl, Patent Owner’s expert, testifies only that a “device” is neither a “domain” nor a “region,” not that a “domain” or a “region” would not or could not identify a “device.” Id. By assuming that a “part” of a telecommunications system has to be a “device,” and by assuming that neither “domain” nor “region” would identify one or more devices, Patent Owner sees an alleged contradiction in allowing media connectivity setting to be as we have construed it, and the phrase that immediately follows the claim term—“identifying one or more other devices.” Because of that alleged contradiction, Patent Owner contends that “at least one media connectivity setting identifying one or more other devices” should be construed as “information identifying one or more parts of a telecommunication network, distinct from either a domain or a region of the telecommunication network.”” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Claim 10 recites, among other limitations, an additional requirement of determining from said bypass mode data that said media gateway “must” be bypassed in said media path. That is in contrast with the language of claim 9, which also depends from claim 8, and which recites, among other limitations, the additional requirement of determining from said bypass mode data that said media gateway “may” be bypassed in said media path. Neither Petitioner nor Patent Owner proposes an express construction for the word “must.” In the circumstances here, the plain and ordinary meaning of “must” in the English language applies. There is no indication that one with ordinary skill in the art would understand the word as conveying something different. The Specification of the ’640 patent does not set forth a special definition of “must.” Also, consistent with the plain and ordinary meaning of “must,” the Specification of the ’640 patent distinguishes between “must” and “may”: It may be determined from the retrieved bypass mode data that the media gateway may be bypassed in the media path, in which case preceding device connectivity data is included in the outbound communication setup request message. It may be determined from the retrieved bypass mode data that the media gateway must be bypassed in the media path, in which case preceding device connectivity data is included in the outbound communication session setup request message. Ex. 1101, 12:35–42 (emphasis added). 34 We determine that “must,” when applied to an action, such as bypassing a media gateway as recited in claim 10, eliminates not taking that action as a possibility and precludes the not taking of that action. In that regard, the different language used between claims 9 and 10 further supports the distinction between the absolute nature of “must” as used in claim 10 and the permissive nature of “may” as used in claim 9. In that regard, as is noted by Patent Owner, Petitioner’s witness, Mr. Bress, agrees that the permissive nature of “may” does not meet the absolute requirement of “must.” PO Resp. 43 (citing Ex. 2004, 123:7–124:5).” slip op. at 34
- Skill levelDecided for patent owner
“Level of Ordinary Skill in the Art Petitioner asserts: As of the priority date of the ’640 Patent of March 22, 2011, a person of ordinary skill in the art (“POSITA”) would have been someone with a Bachelor’s Degree in electrical engineering, computer science, or a related scientific field, and at least two years of work or research experience in the telecommunications industry, which could include telecommunications device design, telecommunications software development, or related areas. Alternatively, a POSITA in the relevant timeframe would have been someone with an advanced degree, such as a Master’s Degree, in electrical engineering, computer science, or a related scientific field, focusing on telecommunications technology. Alternatively, a POSITA in the relevant timeframe could have been someone lacking formal technical education but having experience in the 18 telecommunications industry that would be equivalent to such education. See Ex. 1004 at ¶ 128. Pet. 19–20. Patent Owner does not explicitly take a position on the level of ordinary skill in the art. We determine that no express finding on a specific corresponding level of technical education and experience is necessary, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). C.” slip op. at 18
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“49 media gateways. In that connection, we credit the testimony of Petitioner’s witness, Mr. Bress, over the testimony of Patent Owner’s witness, Mr. Akl, in part because Mr. Bress discusses and explains more of the disclosure of Ejzak. Patent Owner’s argument that it is possible to obtain the media connectivity setting of the ensuing device by requesting the ensuing device for such information (PO Resp. 38) is ineffective with respect to claim 4, which does not specify from where the information is retrieved. Retrieving information from the ensuing device nonetheless still is retrieving. With respect to claim 5 which requires retrieving the information from within the given media gateway, not the ensuing device, we have determined that Petitioner has not stablished that Ejzak necessarily discloses retrieving such information from within the storage of the given gateway. Patent Owner’s argument that the claim limitation of “retrieving ensuing device connectivity data for an ensuing device” would not have been regard by one with ordinary skill in the art as an obvious variant of Ejzak’s determining the IP realm for the next segment of the media path is not supported by sufficient reasoning and explanation directed to Ejzak’s disclosure of provisioning IP realms of media gateways as identified and explained by Petitioner. Between the testimony of respective expert witnesses of Petitioner and Patent Owner, we credit the testimony of Mr. Bress, Petitioner’s witness, over that of Mr. Akl, Patent Owner’s witness. Mr. Bress’s testimony, in our view, is more thorough, whereas Mr. Aky’s testimony, in our view, focuses more on what a prior art 50 disclosure literally states without enough explanation as to the understanding by one with ordinary skill in the art of the teachings associated with that language.” slip op. at 49
Patent outcomesUS 8,687,640 mixedClaim construction§ 103 obviousnessPatents in suitUS 8,687,640 - Genband US LLC / Genband Management Services Corp. v. Metaswitch Networks Ltd.All claims unpatentablePTAB · Dec 15, 2016 · IPR2015-01456 · APJ Jameson Lee · IPR · Final written decision
Claims 1, 6, 7, 11–12, 19–21, and 25–31 are unpatentable as obvious over Ejzak and Cisco and over Ejzak and Intel.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionTerm construed board ownDecided for petitioner
“discussed below, Patent Owner is unpersuasive in arguing (PO Resp. 18–19) that “at least one media connectivity setting identifying one or more other devices” should be construed as “information identifying one or more parts of a telecommunication network, distinct from either a domain or a region of the telecommunications network.” (Emphasis added). Specifically, we determine that the requirement of “identifying one or more other devices” does not exclude information describing domains or regions of a telecommunications network from satisfying the claimed “at least one media connectivity setting identifying one or more other devices.” Patent Owner presents its argument as follows: A “device” is a “part” of a telecommunications network, such as an endpoint or media gateway. Ex. 1001 [’640 Patent] at 11:46 (“a device (endpoint device or media gateway)”); see also Ex. 2006 [Akl Declaration] at ¶ 56. A “device” is neither a “domain” nor a “region” of a telecommunications network. Ex. 2006 [Akl Declaration] at ¶ 56; see also Ex. 2004 [Bress Transcript 1] at 137:15–18 [footnote omitted] and 142:7–11 [footnote omitted]. The following figure demonstrates the relationships between parts, domain, and regions and their associated media connectivity settings:” slip op. at 14
- Skill levelSkill level board ownOther
“As of the priority date of the ’640 Patent of March 22, 2011, a person of ordinary skill in the art (“POSITA”) would have been someone with a Bachelor’s Degree in electrical engineering, computer science, or a related scientific field, and at least two years of work or research experience in the telecommunications industry, which could include telecommunications device design, telecommunications software development, or related areas. Alternatively, a POSITA in the relevant timeframe would have been someone with an advanced degree, such as a Master’s Degree, in electrical engineering, computer science, or a related scientific field, focusing on telecommunications technology. Alternatively, a POSITA in the relevant timeframe could have been someone lacking formal technical education but having experience in the telecommunications industry that would be equivalent to such education. See Ex. 1004 at ¶ 128. Pet. 19–20. Patent Owner does not explicitly take a position on the level of ordinary skill in the art. We determine that no express finding on a specific corresponding level of technical education and experience is necessary, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“37), and based on our discussion of media gateway above, we find that each pair of ALG and associated BG in Ejzak constitutes a media gateway.6 This was a determination first made in the initial decision (Dec. Inst. 21), and Patent Owner put forth no contrary position in the Patent Owner Response. Tr. 48:7–18. Petitioner additionally argues that it would have been obvious to one with ordinary skill to combine each pair of ALG and associated BG in a single physical device, in view of Ejzak alone, because it was well-known in the art that the signaling and media functions of the ALG and BG could be implemented in a single physical device. Pet. 20–21.7 That contingent argument is unnecessary, because none of the claims requires the media gateway to be in the form of a single physical device, such as a unified 6 In particular, each ALG and associated BG pair is a distributed mode SBC (Session Border Controller). 7 Petitioner cites to Cisco and Intel, respectively, as teaching that signaling and media functions can be performed by a single physical device. Pet. 21. In particular, Cisco discloses that SBCs come in two different models, a distributed model and a unified model, and that in the unified model the signaling and media functions are performed not by separate units but by a single operative unit. Ex. 1010, 2. model SBC. Even if we assume that a single physical device is required by the claims, then for reasons expressed by Petitioner, we determine that it would have been obvious to one with ordinary skill in the art, based on the disclosure of Ejzak, to implement Ejzak’s ALG and corresponding BG in a single physical device.8 In that regard, Cisco was cited by Petitioner to show what was well known to one with ordinary skill in the art. In any event, for the reasons indicated by Petitioner on pages 21–25 of the Petition, Cisco would have suggested to one with ordinary skill in the art to implement Ejzak’s ALG and corresponding BG in a single physical device.9” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“In summary, traversed-realm attribute is information about a preceding BG or media gateway including the BG, and that information identifies devices in a traversed IP realm which are accessible from that BG or media gateway. Ejzak discloses limitation [1e]. For limitation [1f], which recites “to enable bypass of said media gateway in said media path if an ensuing device in said outbound signaling path determines that such bypass should be conducted,” Petitioner provides persuasive explanation on pages 16–17, 29–30, and 36–37 of the Petition. For instance, Petitioner explains that in Ejzak, if there is a match between a preceding BG’s IP realm and the next IP realm, one or more BGs may be bypassed. Pet. 16, 30. Petitioner cites to “Case 1,” described in Ejzak, as one example. Pet. 16–17. Ejzak describes: An example of case 1, using FIG. 1 as reference, is that upon receiving an SDP offer from the direction of UA1, ALG3 determines that R4 125 and R1 107 are instances of the same IP realm. ALG3 substitutes the connection and port information from UA1 into the outgoing SDP offer and deletes the traversed-realm instances for R2 113 and R3 119 from the SDP before forwarding. After the end-to-end SDP offer/answer transaction is completed, the media path will bypass BG1 105, BG2 111, and BG3 117. Ex. 1003 ¶ 74. Petitioner also relies on “Case 3,” described in Ejzak, as another example. Pet. 17, 30. Ejzak describes:” slip op. at 27
Patent outcomesUS 8,687,640 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 8,687,640 - Geosys-Intl, Inc. v. Farmers Edge Precision Consulting Inc.Rehearing grantedPTAB · Nov 22, 2016 · IPR2015-00711 · APJ James T Moore · IPR · Rehearing
Rehearing was granted, and claim 25 was held unpatentable as obvious over Hauwiller, the Background of the ’867 patent, and Shibusawa.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“After considering the arguments in the Request for Rehearing and reconsidering the evidence of record, we agree with Petitioner that the reasoning in our Final Decision misapprehended what is required by claim 25. Claim 25 does not require satellite imaging to create a map of soil electrical conductivity. Applying this corrected understanding of claim 25, we also now agree that Petitioner established by a preponderance of the evidence that claim 25 would have been obvious in view of Hauwiller, the Background of the ’867 patent, and Shibusawa.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“Applying this corrected understanding of claim 25, we also now agree that Petitioner established by a preponderance of the evidence that claim 25 would have been obvious in view of Hauwiller, the Background of the ’867 patent, and Shibusawa. As summarized above, Petitioner presented evidence that Shibusawa discloses a map of measurements of soil electrical conductivity, and that combining Shibusawa’s teachings with Hauwiller’s system would have been obvious because electrical conductivity testing is a relatively efficient method for determining soil properties. Pet. 45–46; Ex. 1004, 20:11–16, 23:14–17; Ex. 1009 ¶ 80. As Petitioner points out, the subject matter recited in claim 25 is similar to that of claims 7 and 14, and we determined in our Final Decision that Petitioner’s contentions regarding the obviousness of those claims were persuasive. See Req. Reh’g 5; Dec. 39–40.” slip op. at 5
§ 103 obviousnessPatents in suitUS 7,343,867 - Geosys-Intl, Inc. v. Farmers Edge Precision Consulting Inc.Rehearing grantedPTAB · Nov 22, 2016 · IPR2015-00709 · APJ Timothy J Goodson · IPR · Rehearing
Rehearing granted; claim 25 held unpatentable as obvious over Hauwiller, the Background of the ’912 patent, and Shibusawa.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“was based on a misapprehension of what is required by claim 25. Req. Reh’g 6. Specifically, Petitioner argues that claim 25 does not require satellite imaging to create a map of soil electrical conductivity. Id. at 1. Petitioner points out that claim 25 requires that the soil electrical conductivity map is used for the calculation of the “site-specific measures of the soil nutrient existing in the field.” Id. at 2. Claim 15 requires that the map of site-specific field characteristic data generated using a satellite image of the agricultural field is used in the calculation of the map of “site-specific soil nutrient amount needed to produce at each site a maximum possible crop yield.” Ex. 1001, 12:7–12. In other words, the map of soil electrical conductivity recited in claim 25 is used in the first calculating step of claim 15, not the second calculating step that uses a map generated through satellite imaging. After considering the arguments in the Request for Rehearing and reconsidering the evidence of record, we agree with Petitioner that the reasoning in our Final Decision misapprehended what is required by claim 25. Claim 25 does not require satellite imaging to create a map of soil electrical conductivity. Applying this corrected understanding of claim 25, we also agree that Petitioner established by a preponderance of the evidence that claim 25 would have been obvious in view of Hauwiller, the Background of the ’912 patent, and Shibusawa. As summarized above, Petitioner presented evidence that Shibusawa discloses a map of measurements of soil electrical conductivity, and that combining Shibusawa’s teachings with Hauwiller’s system would have been obvious because electrical conductivity testing is a relatively efficient method for determining soil properties. Pet. 47; Ex. 1004, 20:11–16, 23:14–17; Ex. 1009 ¶ 80. As Petitioner points out, the subject matter recited in claim 25 is similar to that of claims 7 and 14, and we determined in our Final Decision that Petitioner’s contentions regarding the obviousness of those claims were persuasive. See Req. Reh’g 5–6; Dec. 34.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“reconsidering the evidence of record, we agree with Petitioner that the reasoning in our Final Decision misapprehended what is required by claim 25. Claim 25 does not require satellite imaging to create a map of soil electrical conductivity. Applying this corrected understanding of claim 25, we also agree that Petitioner established by a preponderance of the evidence that claim 25 would have been obvious in view of Hauwiller, the Background of the ’912 patent, and Shibusawa. As summarized above, Petitioner presented evidence that Shibusawa discloses a map of measurements of soil electrical conductivity, and that combining Shibusawa’s teachings with Hauwiller’s system would have been obvious because electrical conductivity testing is a relatively efficient method for determining soil properties. Pet. 47; Ex. 1004, 20:11–16, 23:14–17; Ex. 1009 ¶ 80. As Petitioner points out, the subject matter recited in claim 25 is similar to that of claims 7 and 14, and we determined in our Final Decision that Petitioner’s contentions regarding the obviousness of those claims were persuasive. See Req. Reh’g 5–6; Dec. 34.” slip op. at 4
§ 103 obviousnessPatents in suitUS 7,171,912 - Mastercraft Boat Company, LLC v. Malibu Boats, LLCInstitution deniedPTAB · Nov 16, 2016 · IPR2016-01058 · APJ Josiah C Cocks · IPR · Institution
The Board denied institution because MasterCraft did not show a reasonable likelihood of success on any challenge to claims 27–29.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we conclude that the information presented in the Petition does not establish a reasonable likelihood of success with respect to claims 27–29 of the ’873 patent. We do not institute an inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“wake surfing” appears in the preamble of claim 27, the body of the claim includes recitation of particular structures, i.e. “first and second upright wake modifiers” that operate to form left side and right side “asymmetrical wakes.” We determine that the preamble of claim 27 provides informative context for the type of asymmetrical wakes that are generated by the upright wake modifiers. In that respect, the produced asymmetrical wakes must be understood as suitable for surfing. Indeed, that determination is also consistent with other language of claim 27. In particular, the body of claim 27 further recites that each of the asymmetrical wakes generated are “different from a non-surf wake.” It follows logically that if asymmetrical wakes must be different from non-surf wakes, then the asymmetrical wakes are understood as surf wakes, or wakes suitable for surfing. Accordingly, we conclude that the asymmetrical wakes produced by the upright wake modifiers in claim 27 must be those recognizable as suitable for surfing. We turn now to the meaning of “wakes suitable for surfing”” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“suitable for surfing.” For the following reasons, we agree with the meaning that is offered by Malibu. At the outset, we do observe that the ’873 patent describes that “[o]ne aspect of the present invention is directed to a surf wake system for modifying a wake formed by a watercraft travelling through water.” Ex. 1001, 2:11–13. We, however, do not share MasterCraft’s view that such description establishes the meaning of the type of “wakes” described in claim 27. We agree with Malibu that an asymmetrical wake of claim 27 that is “different from a non-surf wake” and which is characterized as being “suitable for surfing” is a wake that must be suitable for surfing. MasterCraft’s proposal that simply any wake that has been “modified” amounts to a “wake suitable for surfing” is not correct, in our view, as that meaning would encompass wakes that, although modified, are not suitable for surfing.” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Not reached
“plus-function limitation subject to 35 U.S.C. § 112, ¶6 (pre-AIA), because it fails to ‘recite sufficiently definite structure’ and recites ‘function without reciting sufficient structure for performing that function.’” Pet. 5 (citations omitted). To that end, MasterCraft contends that the allegedly corresponding structure disclosed in the Specification are variants of types of “water diverters” or “flaps.” Id. at 8. Malibu disagrees that the noted phrase invokes § 112, ¶ 6, contending instead that the noted phrase describes structural details of a wake modifier. PO Resp. 26–27. For purposes of this Decision, we determine that it is not necessary to ascertain whether the pertinent phrase is a means-plus-function limitation. In particular, we determine that it is only necessary to consider that the noted phrase requires that the wake modifiers are components that are structured and configured to create asymmetrical wakes that are suitable for surfing.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,578,873 - Mastercraft Boat Company, LLC v. Malibu Boats, LLCInstitution deniedPTAB · Nov 16, 2016 · IPR2016-01057 · APJ Josiah C Cocks · IPR · Institution
The Board denied institution because MasterCraft did not show a reasonable likelihood that claims 1, 2, 6, 7, 17–20, 22, and 23 were unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we conclude that the information presented in the Petition does not establish a reasonable likelihood of success with respect to claims 1, 2, 6, 7, 17–20, 22, and 23 of the ’873 patent. We do not institute an inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“At the outset, we observe that the ’873 patent describes that “[o]ne aspect of the present invention is directed to a surf wake system for modifying a wake formed by a watercraft travelling through water.” Ex. 1001, 2:11–13. We, however, do not share MasterCraft’s view that such description establishes the meaning of “surf wake.” We agree with Malibu that, at its core, a surf wake must be a wake that is suitable for surfing. MasterCraft’s proposal that simply any wake that has been “modified” amounts to a “surf wake” is not correct as that meaning would encompass wakes that, although modified, are not suitable for surfing.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)
“2. Anticipation by Svensson Anticipation is established only when a single prior art reference discloses all elements of the claimed invention. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). Here, MasterCraft contends that all of the features of” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not found
“In light of that testimony, we understand that Dr. Savander’s computer modeling is based on specific assumptions as to sizing and positioning of flaps when placed on a vessel hull so as to allegedly produce a surf wake. Dr. Savander provides no persuasive reasoning as to why those assumptions are derived appropriately from the teachings of the prior art. Indeed, while noting that Svensson, itself, provides “no geometric guidance as to the height and width of the flaps,” as noted above, Dr. Savander proceeds to “estimate[]” without adequate reasoning that a flap height of “approximately 50% of the hull side height, or 18.2 inches” would be used “in order for the flap to start at the lower chine and extend above the water surface.” Id. Dr. Savander also theorizes that flap width would “fall into the range of 2, 3, and 4 inches.” Id. It simply does not follow on the record before us that the particular flap dimensions and positioning would have been derived from the teachings of the prior art. Yet, those parameters are crucial to MasterCraft’s position that claims of the ’873 patent would have been obvious based on Svensson. We are not satisfied that those obviousness challenges are guided by the teachings of the prior art rather than formulated, in-part, from hindsight with the intention of creating the upright water diverters disclosed in the ’873 patent. We also find lacking in the Petition suitable articulated reasoning as to why a skilled artisan would have adequate reason to combine the teachings of the prior art. In particular, MasterCraft simply concludes that Svensson’s teachings have “broad applicability” and on that basis a person of ordinary skill in the art generally would have been motivated to apply those teachings to any given boat hull, such as that disclosed in Clement. Pet. 31. That is not, in our view, sufficiently articulated reasoning with rational evidentiary underpinnings that is necessary to demonstrate an adequate reason to combine prior art teachings. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,578,873 - Vista Outdoor Operations LLC v. Liberty Ammunition, LLCRehearing deniedPTAB · Oct 31, 2016 · IPR2016-00539 · APJ Michael L Woods · IPR · Rehearing
The Board denied rehearing and left in place the denial of institution for claims 1–42 on all six grounds, finding no overlooked or misapprehended matter.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS The applicable standard for a request for rehearing is set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply. Furthermore, when rehearing a decision on a motion, the Board will review the decision for an abuse of discretion. Id. at § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Board found that these embodiments were distinct, and determined that Petitioner failed to establish a reasonable likelihood of success on its challenges when combining features from these distinct embodiments. See Decision 13–16, 19, 20. With respect to the anticipation ground (Ground 1), the Board explained that “it is not enough that the prior art reference discloses multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Id. at 13 (citing Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371–72 (Fed. Cir. 2008)). With respect to Grounds 2 and 3, the Board determined that Petitioner failed to explain adequately how Woodring’s distinct embodiments are being combined with one another and the cited art to arrive at the claimed invention. Id. at 18, 20.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“The Board found that these embodiments were distinct, and determined that Petitioner failed to establish a reasonable likelihood of success on its challenges when combining features from these distinct embodiments. See Decision 13–16, 19, 20. With respect to the anticipation ground (Ground 1), the Board explained that “it is not enough that the prior art reference discloses multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Id. at 13 (citing Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371–72 (Fed. Cir. 2008)). With respect to Grounds 2 and 3, the Board determined that Petitioner failed to explain adequately how Woodring’s distinct embodiments are being combined with one another and the cited art to arrive at the claimed invention. Id. at 18, 20.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“determined that Petitioner failed to establish a reasonable likelihood of success on its challenges when combining features from these distinct embodiments. See Decision 13–16, 19, 20. With respect to the anticipation ground (Ground 1), the Board explained that “it is not enough that the prior art reference discloses multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Id. at 13 (citing Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371–72 (Fed. Cir. 2008)). With respect to Grounds 2 and 3, the Board determined that Petitioner failed to explain adequately how Woodring’s distinct embodiments are being combined with one another and the cited art to arrive at the claimed invention. Id. at 18, 20.” slip op. at 4
§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,748,325 - Flotek Industries, Inc. / Turbeco, Inc. et al. v. National Oilwell DHT, L.P.All claims unpatentablePTAB · Oct 26, 2016 · IPR2015-01239 · APJ James J Mayberry · IPR · Final written decision
Claims 1, 4, and 8 are unpatentable as obvious over Bielstein and Nelson; claim 7 is unpatentable as anticipated by Sims.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“a. Level of Ordinary Skill in the Art Flotek contends that the level of ordinary skill associated with the ’317 patent “is a person who has, through formal education or extensive practical experience, a Bachelor’s Degree in Mechanical Engineering or a similar degree, or 2–3 years of experience in designing, using or making downhole tools having various applications.” Pet. 3 (referencing the Declaration of Dr. Smith, Ex. 1002 ¶¶ 9–11). NOV does not dispute this definition of the level of ordinary skill associated with the ’317 patent. See PO Resp. (failing to discuss the level of ordinary skill in the art); Ex. 2004 (providing the Declaration of Dr. Akin, which fails to define the level of ordinary skill for the ’317 patent).4” slip op. at 19
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“requirements of 35 U.S.C. § 112, paragraph 6,3 and provides a construction consistent with our rules. See Pet. 4; 37 C.F.R. § 42.104(b)(3). We construe means-plus-function limitations by determining what the claimed function is and identifying the structure disclosed in the specification that corresponds to the means for performing that function. See Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1360 (Fed. Cir. 2000); see also In re Donaldson Co., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (“[P]aragraph six applies regardless of the context in which the interpretation of means-plus-function language arises, i.e., whether as part of a patentability determination in the PTO or as part of a validity or infringement determination in a court.”). Flotek identifies the function for this claim element as “rotating the first [valve] member.” See Pet. 4. Flotek contends that the structures disclosed in the ’317 patent corresponding to this function are “turbines, rotary drill motors, positive displacement motors, or Moineau motors.” Id. NOV did not dispute Flotek’s construction of this term, including the identified structures, in its Preliminary Response and, as we determined that Flotek’s construction is reasonable, we adopted it in our Decision to Institute. See Dec. on Inst. 11. Neither party offers, expressly or implicitly, an alternative construction for this term and, based on the record developed during trial, we discern no reason to alter the meaning we previously determined, including identified structures. See PO Resp. 8 (“This response” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“We construe means-plus-function limitations by determining what the claimed function is and identifying the structure disclosed in the specification that corresponds to the means for performing that function. See Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1360 (Fed. Cir. 2000); see also In re Donaldson Co., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (“[P]aragraph six applies regardless of the context in which the interpretation of means-plus-function language arises, i.e., whether as part of a patentability determination in the PTO or as part of a validity or infringement determination in a court.”). Flotek identifies the function for this claim element as “rotating the first [valve] member.” See Pet. 4. Flotek contends that the structures disclosed in the ’317 patent corresponding to this function are “turbines, rotary drill motors, positive displacement motors, or Moineau motors.” Id. NOV did not dispute Flotek’s construction of this term, including the identified structures, in its Preliminary Response and, as we determined that Flotek’s construction is reasonable, we adopted it in our Decision to Institute. See Dec. on Inst. 11. Neither party offers, expressly or implicitly, an alternative construction for this term and, based on the record developed during trial, we discern no reason to alter the meaning we previously determined, including identified structures. See PO Resp. 8 (“This response” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“In our Decision instituting trial, we determined that the ordinary and customary meaning of the term “axial flow opening” under a broadest reasonable interpretation is “an aperture or open width that permits flow in the axial direction.” Dec. on Inst. 13–14 (referencing Ex. 3001). Neither party offers, expressly or implicitly, an alternative construction for this term and, based on the record developed during trial, we discern no reason to alter the above construction.” slip op. at 11
Patent outcomesUS 6,508,317 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,508,317
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.