• Penumbra, Inc. v. Rapidpulse, Inc.No claims unpatentable
  PTAB · Feb 17, 2026 · IPR2024-01261 · APJ Jamie T Wisz · IPR · Final written decision

  Claims 1–20 were not shown unpatentable because the asserted combinations did not teach the claimed predetermined cycle for controlling distal fluid flow.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(1) a person with a B.S. in engineering or an equivalent field, with two-four years of academic or industry experience in aspiration embolectomy and thrombectomy or comparable industry experience who would, where appropriate, work or consult with others, including a physician, to develop embolectomy or thrombectomy devices; or (2) an interventional neurosurgeon with at least three years of experience developing and/or using medical devices in embolectomy or thrombectomy procedures, and who would, where appropriate, work or consult with others, including an engineer, to develop such a medical device. Pet. 11 (citing Ex. 1005 ¶ 48). Petitioner also contends that, “[a] person with less education but more relevant practical experience, or more relevant education but less practical experience, may also meet this standard.” Id. Patent Owner states that for purposes of its PO Response, it “accepts ¶ 44). We adopt Petitioner’s characterization because it is consistent with the level of skill in the art at the time of the invention as reflected by the ’402 patent and the cited prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “specification explicitly includes sensors similar to those in the prior art in support of their argument that the claimed “predetermined cycle” must not exclude the use of such sensors. Pet. Reply 15 (citing Ex. 1001, 32:55–33:7, 40:66–41:5, 44:9–29). We reviewed the portions of the specification cited by Petitioner. We agree with Patent Owner that one excerpt discussing sensor use appears to be directed to triggering the predetermined cycle rather than causing timing changes during the cycle itself (Ex. 1001, 32:55–66) (describing use of a pressure sensor to “determine when the vacuum channel 3 is clogged by a thrombus and automatically perform the unclogging procedures described herein”), while another excerpt discusses a sensor that Petitioner that the ’402 patent discusses the use of sensors to “tune” the system and that such “tuning” can be done statically (setting the cycle timing in advance) or dynamically (adjusting the timing during the cycle itself). See Ex. 1001, 48:19–49:50. Overall, we find that these disclosures involving sensors demonstrate that sensors may be used in various ways in different embodiments. However, none of these disclosures explicitly discuss the use of sensors in conjunction with a “pre-determined cycle.” Therefore, we find that the ’402 patent specification’s discussion of “sensors” are not particularly informative as to the appropriate construction of a “predetermined cycle” and do not outweigh the other explicit disclosures of “predetermined cycle” in the patent. We next turn to the other intrinsic evidence discussed by the parties — the prosecution history. As discussed by Patent Owner, in the Notice of Allowance, the Examiner found that Garrison did not teach or suggest a “predetermined cycle” because Garrison’s controller “changed the cycle of opening and closing the valves based on feedback from sensors.” Ex. 1004, 86. We acknowledge that the patent applicant filed subsequent comments during prosecution in which they stated that they “do[] not concede that the Examiner’s characterizations of the terms of the claims and the prior art are correct.” Id. at 29. However, we agree with Patent Owner that the importance of the Examiner’s statement in the Notice of Allowance does not rely on it being an express disclaimer (a standard which it does not meet). PO Sur-reply 8. We also considered Petitioner’s contention that the Examiner’s interpretation of Garrison may have been in error (PO Resp. 16); however, even if this were true, the Examiner’s statement still provides helpful insight into how the Examiner was interpreting the term sensors to change the opening and closing of valves during a cycle was not a “predetermined cycle.” Id. at 86. In sum, we find that Patent Owner’s proposed construction is consistent with the usage of the term “predetermined cycle” in the ’402 patent specification and prosecution history. Thus, after considering all of the cited evidence, we construe “predetermined cycle” to mean that “the timing of the sequence of valve operations in the cycle is determined beforehand, i.e., fixed, rather than varying based on feedback after operation begins.”” slip op. at 14

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “2. Other Terms The parties also provided proposed constructions for the limitations of “[limited/limiting] to a positive amount of exit flow” and “control[ling] fluid flow in and out from the distal end of the catheter.” See Pet. 15–16; Pet. Reply 1–8; PO Resp. 22–24; PO Sur-Reply 2–6. However, having evaluated the arguments and evidence before us, we determine that construction of these terms is not necessary for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that neither Petitioner nor Mr. Brown propose any combination of Yang and Mullins that does not include Mullins’s pressure sensor in order “to control fluid flow in and out from the distal end of the catheter.” Indeed, in addressing the “predetermined cycle” limitation, Mr. Brown contends that Mullins discloses a “cycling controller that ‘varies aspiration pressure according to sensed pressure within the catheter lumen.’” Ex.1005 ¶¶ 131–32 (citing, e.g., Ex.1008, 27:40–28:20 (“[a] novel aspect of this pump system is the incorporation of feedback into the pump algorithm in order to produce more effective pressure cycling”)). This use of a sensor to change pressure during a cycle, is not a “predetermined cycle” under our construction. combinations is its discussion of distal end flow control, not for its sensors.” Pet. Reply 17 (citing Ex. 1035 ¶ 83). However, Petitioner’s obviousness grounds rely on the combination of Yang and Mullins, especially with regard to Mullins’s disclosure of “a controller” in order “to control fluid flow in and out.” As discussed above, Mullins relies on the sensor-feedback approach in order to control flow and we find that Petitioner has not presented persuasive evidence of how the combined disclosures of Yang and Mullins would control flow without using Mullins’s sensor feedback approach. See W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983) (error to “consider[] … references in less than their entireties, i.e., in disregarding disclosures in [them] … that diverge from and teach away from the invention”). Therefore, we determine that Petitioner has not sufficiently shown that the combination of Yang and Mullins discloses or renders obvious “a controller configured to open and close the vacuum valve and the vent valve in a predetermined cycle to change a level of vacuum at the distal end of the catheter and to control fluid flow in and out from the distal end of the catheter.” Accordingly, having considered the parties’ respective evidence and arguments, we find that Petitioner has not shown by a preponderance of the evidence that claim 1 of the ’402 patent would have been unpatentable as obvious over the combination of Yang and Mullins.” slip op. at 27

  Patent outcomesUS 11,406,402 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,406,402
• Axion Biosystems, Inc. v. Agilent Technologies, Inc.No claims unpatentable
  PTAB · Feb 2, 2026 · IPR2024-01467 · APJ David Cotta · IPR · Final written decision

  Claims 1–8 and 11–15 were not shown unpatentable over Xu-752 and Jones because the proposed combination did not establish obvious millisecond time resolution.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends a person of ordinary skill in the art (“POSA”) as of May 2009 “would have had a B.S. in electrical/mechanical/biomedical engineering or biological science, or a related field, and approximately 2 years of relevant experience or equivalent study in systems and methods for bioanalysis of cells.” Pet. 14 (citing Ex. 1003 ¶¶ 23–25). Patent Owner adopts this definition for purposes of this proceeding. PO Resp. 9 (citing Ex. 2009 ¶ 19). We find Petitioner’s description of the level of ordinary skill in the art to be consistent with the level of skill reflected in the ’508 patent and in the prior art of record. Accordingly, we apply Petitioner’s definition in this decision.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “As used herein, “impedance measurement at millisecond time resolution” refers to the ability to perform a series of at least two consecutive impedance measurements within milliseconds of one another for each and every well of the system where each well is associated with an electrode array for impedance measurement. In each instance the time between two consecutive impedance measurements are less than 300 milliseconds from one another. Id. at 10:8–15. There does not appear to be any dispute as to the definitional nature of the first sentence in the passage above. That is, the parties agree that millisecond time resolution should be construed to mean: “the time between two consecutive impedance measurements for each and every well being evaluated in the claimed apparatus or system.” PO Resp. 15 (proposing construction); Pet. Reply. 23 (“Axion also agrees that the term ‘millisecond time resolution’ is ‘the time between two consecutive impedance measurements for each and every well being evaluated in the claimed apparatus or system.’”). The parties also agree that we do not need to determine whether the time interval between two consecutive impedance measurements is less than 300 milliseconds, as set forth in the definition portion of the specification, or whether it can be met by some other time interval, as suggested by other portions of the specification. See e.g., Ex. 1001, 23:49–55 (explaining that “[i]n some embodiments 500 millisecond time resolution is sufficient”), 24:37–39 (similar); PO Resp. 15 (arguing that “the distinction between 300 milliseconds and 500 milliseconds is immaterial to the dispute in this IPR because Jones teaches a 1.5 second update period, thus at least three times longer than the 500 milliseconds formulation”); Pet. Reply 23–24 (section headed “[Petitioner] Agrees That, In This IPR, The 300 Versus 500 Milliseconds Distinction is Immaterial To Addressing the Unpatentability of the Challenged Claims”), see also, Pet. Reply 24–26 (asserting that the claims are indefinite because it is not clear whether they require a 300 or a 500 millisecond time interval, but arguing that “the claims’ unpatentability can be determined without resolving the 300 versus 500 milliseconds indefiniteness issue”). We agree with the parties that “millisecond time resolution” should be construed to mean: “the time between two consecutive impedance measurements for each and every well being evaluated in the claimed apparatus or system.” PO Resp. 15; Pet. Reply. 23. We further agree that resolution of this case does not require that we determine whether the period between two consecutive impedance measurements is less than 300 or less than 500 milliseconds because Petitioner has not carried its burden under either time interval.” slip op. at 7

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Ex. 1003 ¶ 179. But Dr. Kim does not cite to any additional supporting evidence or provide any technical reasoning to support his statements. The notion that one can reduce the time between measurements by, e.g., reducing the number of frequencies measured, has intuitive appeal and appears mathematically correct. However, the absence of technical reasoning and supporting evidence diminishes the persuasiveness of Dr. Kim’s testimony that the POSA would made such modifications to reduce the time between measurements. Dr. Kim does provide some technical reasoning in connection with his discussion of eliminating all reference channels as a way to get the time resolution down to the levels required by, e.g., claim 14, which recites a millisecond time resolution of “less than 5 milliseconds.” See e.g., Ex. 1003 ¶ 172 (“A POSA seeking to study biological cell phenomena occurring on the order of a few milliseconds would have recognized that after measuring the reference network channels at the start, the reference network channels would not need measured again for some time, e.g., because temperature and other drift factors do not change appreciably on a millisecond time scale.”). However, even if we were to credit this testimony, Dr. Kim still lacks support and reasoning for the selection of the other parameters in his noreference-channel calculations. See, e.g., id. ¶ 173 (positing, but not providing technical reasoning for using, a no-reference-channel impedance system with 16 wells, a single 10kHz measurement frequency, and 16 daughter boards that measure simultaneously rather than sequentially).” slip op. at 29

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentableNot shown unpatentable

    “Given that Jones’s only exemplified embodiment targets a 1.5 second update period, that Jones does not suggest reducing the update period, and that much of Jones’s focus is on benefits other than speed of measurement, Jones’s impedance analyzer seems an unlikely choice for a POSA seeking to take measurements having millisecond time resolution. Put another way, we find no persuasive non-hindsight reason that supports Petitioner’s assertion that the POSA would have sought to apply Jones’s impedance analyzer to Xu-752’s system in order to take measurements in millisecond time resolution.” slip op. at 22

  Patent outcomesUS 11,906,508 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,906,508
• Nokia Of America Corporation / Ericsson Inc. et al. v. General Access Solutions, Ltd.No claims unpatentable
  PTAB · Apr 14, 2025 · IPR2023-01416 · APJ Ken B Barrett · IPR · Final written decision

  The Board held claims 1–15 and 18 not unpatentable; the petition failed to prove the asserted anticipation and obviousness grounds, including failure to establish WiMAX as prior art.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentOther

    “filed with the Office a statutory disclaimer disclaiming method claims 16, 17, 19, and 20. See Ex. 2007; see also Tr. 33, 21:1–12 (Patent Owner’s counsel informing the Board that the disclaimer had been filed in the USPTO Patent Center, and Petitioner’s counsel having no objection to the filing of the disclaimer as an exhibit in this inter partes review); Tr. 34:19 1 Petitioner identifies Nokia of America Corporation, Ericsson Inc., and T-Mobile USA, Inc. as real parties in interest. Pet. 72. 2 Patent Owner identifies General Access Solutions, Ltd. as the real party in interest. Paper 6, 1. (Patent Owner’s counsel stating, “General Access has disclaimed method Claims 16, 17, 19, and 20.”). We treat disclaimed claims as if they never existed. See Facebook, Inc. v. SKKY, LLC, CBM2016-00091, Paper 12 at 8 (PTAB Sept. 28, 2017) (expanded panel) (precedential) (“The Federal Circuit has held consistently that claims disclaimed under § 253(a) should be treated as though they never existed.”) (citing, inter alia, Vectra Fitness, Inc. v. TWNK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (“This court has interpreted the term ‘considered as part of the original patent’ in section 253 to mean that the patent is treated as though the disclaimed claims never existed.”); Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (“A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.”)). Accordingly, the remaining claims challenged in this proceeding are apparatus claims 1–15 and method claim 18.” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “of both types of parameters to be stored in the same “device” is consistent with the claim language. The claim recites “a profile parameter storage device,” “said profile parameter storage device for storing [two parameter] values,” and refers to “the values stored at said profile parameter storage device.” Ex. 1001, 13:10–16. Accordingly, the claim language speaks of a single device for storing both types of parameters.12 And, Petitioner does” slip op. at 32

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “of both types of parameters to be stored in the same “device” is consistent with the claim language. The claim recites “a profile parameter storage device,” “said profile parameter storage device for storing [two parameter] values,” and refers to “the values stored at said profile parameter storage device.” Ex. 1001, 13:10–16. Accordingly, the claim language speaks of a single device for storing both types of parameters.12 And, Petitioner does” slip op. at 32

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “Id. “[A] work is not publicly accessible if the only people who know how to find it are the ones who created it.” Samsung Elecs. Co. v. Infobridge Pte. Ltd., 929 F.3d 1363, 1372 (Fed. Cir. 2019) (citing SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1196 (Fed. Cir. 2008) Application of Bayer, 568 F.2d 1357 (CCPA 1978)). Accordingly, in this case, Petitioner must demonstrate by a preponderance of the evidence that the WiMAX exhibit was disseminated or otherwise made available to interested ordinary artisans outside of the group that created the document. Petitioner has failed to satisfy that burden.” slip op. at 48

  Patent outcomesUS 6,947,477 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,947,477
• Cellco Partnership D/B/A Verizon Wireless v. General Access Solutions, Ltd.No claims unpatentable
  PTAB · Dec 23, 2024 · IPR2023-01147 · APJ Ken B Barrett · IPR · Final written decision

  Claims 1–6 were not shown unpatentable because the asserted references did not establish that the claimed second transceiver routes information based on monitored signal characteristics.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person of ordinary skill in the art (“POSA”) at the time of the purported invention would have had either: (1) a Bachelor of Science degree in computer science, electrical or computer engineering, or a related field, and at least 2 years of work or research experience in digital communications systems, such as wireless communications systems and networks, or equivalent, or a Master’s degree in electrical engineering, computer engineering, computer science or similar field. Additional education could compensate for less practical experience and vice versa. Ex. 1002, ¶¶1-46. Pet. 10. Patent Owner does not address the level of ordinary skill in the art. Cf. Ex. 2007 ¶19 (Patent Owner’s declarant, after acknowledging Petitioner’s definition, stating: “Patent Owner has not offered a different understanding of a POSITA, and the PTAB accepted Petitioner’s submission. I accept and use Petitioner’s and the PTAB’s definition of a POSITA.”). Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “During oral argument, both parties confirmed their respective positions that the claim term “route” needs no construction. See, e.g., Tr. 11:7–9 (Petitioner’s counsel: “Frankly, it doesn’t make any difference to the analysis of the prior art. And so, we don’t believe that the PTAB needs to construe the term route, and so we have not proposed a construction.”); id. at 58:25–59:2 (Patent Owner’s counsel: “You know, I don’t think that you have to define routing in order to decide the case. I think you can do it, you know, just apply whatever plain and ordinary meaning is.”); cf. Tr. 40:14–18 (Patent Owner’s counsel at oral argument: “For the routing itself, you know, there is a District Court construction and that’s a construction that the other—the Petitioner did not ask for determination whether that’s appropriate or not appropriate here. We did not address that as well, so the parties aren’t arguing that that construction should be applied here.”). For the reasons discussed below, we determine that Petitioner has not proven by a preponderance of the evidence that the prior art discloses or teaches, under Petitioner’s articulated theories, that a second transceiver routes information based on monitored characteristics. This is dispositive of the inter partes review. Accordingly, we determine that no claim terms require express construction for purposes of deciding the dispositive issues.” slip op. at 13

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Ex. 1004, 5:25–36 (emphasis added). Thus, Palmer discloses that the determination to roam to another cell may be done by the mobile worker’s wireless communication device 20 having a specifically-programmed processor or may be done centrally, with examples being the “network” or central host processor. We disagree that this constitutes a disclosure of the access point 40 performing the roaming determinations. Rather, we find to be persuasive and credible Dr. Chrissan’s testimony that “a POSITA recognizes that an access point does not qualify as ‘centrally, for example, by the network or a central host processor,’” and, “[i]nstead, this phrase refers to one of the centrally located devices such as network 14 or central host processor 12 (in Fig. 1), or a device in administration building 33 (in Fig. 2).” Ex. 2007 ¶ 71 (citing Ex. 1004, Figs. 1, 2). Dr. Chrissan’s opinion is consistent with Palmer’s disclosure, as we will now discuss.” slip op. at 23

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We determine that Petitioner has not established by a preponderance of the evidence its foundational assertion that Palmer discloses that “access point 40 determines whether roaming by a portable terminal 20 should take place and routes data packets accordingly.” Pet. 26–27; see Technology Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008) (“Failure to prove the matter as required by the applicable standard means that the party with the burden of persuasion loses on that point—thus, if the fact trier of the issue is left uncertain, the party with the burden loses.”). As such, Petitioner has not met its burden to show that Palmer discloses, as recited in independent claim 1, a second transceiver that, “based on the first signal characteristics and the second characteristics, routes information to the first mobile station and the second mobile station, respectively,” or, as recited in independent claim 6, “based on the first signal characteristics and the second characteristics, routing, using the second transceiver, information to the first mobile station and the second mobile station, respectively.” Ex. 1001, 10:38–44, 11:19–22. The Petition does not contain a contention that this “route” aspect of the claims would have been obvious. Compare Pet. 25–26 (offering an alternative argument for the monitoring aspect; contending that, “to the extent the Board disagrees that Palmer’s access point 40 performs the monitoring, it would have nonetheless been obvious to a POSA to select the access point 40 to perform the monitoring since it directly communicates with the portable terminals 20.”), with id. at 26–27 (making the anticipationtype contention that “[t]he access point 40 routes information” without an alternative obviousness contention); see also Pet. Reply 12–13 (arguing, under the monitoring-and-routing heading, that monitoring by the access point would have been obvious, but not arguing the same for routing). Petitioner has not shown by a preponderance of the evidence that independent claims 1 and 6 and dependent claims 2–4 are anticipated by or would have been obvious over Palmer.” slip op. at 28

  Patent outcomesUS 9,426,794 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,426,794
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Power2b Inc.No claims unpatentable
  PTAB · Jun 26, 2023 · IPR2022-00325 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 1–17 were not shown unpatentable: the Keely–Geva combinations lacked sufficient reasoning to combine, and did not teach claimed movement in the third dimension.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Testimony cannot take the place of disclosure in a prior art reference, when that disclosure is required as part of the unpatentability analysis. See CTPG at 36. More specifically, the Consolidated Trial Practice Guide sets forth the following: Expert testimony, however, cannot take the place of a disclosure in a prior art reference, when that disclosure is required as part of the unpatentability analysis. For example, because “[a] claim is anticipated only if each and every element as set forth in the 8 For exhibits 1004 and 2025, we use the pagination added by the submitting party. 9 Although not relied on for independent claim 1, Kameyama also was cited in that Information Disclosure Statement that was initialed by the Examiner. Id. single prior art reference,” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987), a petitioner asserting anticipation cannot rely on its expert to supply disclosure of a claim element that is not expressly or inherently present in the reference. Similarly, in an obviousness analysis, conclusory assertions from a third party about general knowledge in the art cannot, without supporting evidence of record, supply a limitation that is not evidently and indisputably within the common knowledge of those skilled in the art. K/S Himpp v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365 (Fed. Cir. 2014). Furthermore, because an inter partes review may only be requested “on the basis of prior art consisting of patents or printed publications,” 35 U.S.C. § 311(b), expert testimony cannot take the place of disclosure from patents or printed publications. In other words, expert testimony may explain “patents and printed publications,” but is not a substitute for disclosure in a prior art reference itself. CTPG at 36. We, therefore, find that Dr. Bederson’s testimony (Ex. 1002 ¶ 92) does not remedy the deficiency in Geva’s disclosures. Petitioner has not shown that Geva teaches element 1[G].” slip op. at 49

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on the complete record now before us, we maintain our determination in the Institution Decision (Inst. Dec. 8) that Petitioner’s proposed definition is consistent with the level of skill reflected in the 3 Patent Owner does not present objective evidence of nonobviousness based on the complete record now before us. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art, except without the “at least” phrase. Our analysis and determinations herein, however, do not turn on which level of skill we adopt.” slip op. at 8

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Importantly, to prevail in its challenge to Patent Owner’s claims, Petitioner must demonstrate that the claims are unpatentable, and that burden never shifts to the patentee. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012)); see also Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” (quoting 35 U.S.C. § 312(a)(3))). includes argument and evidence indicating clear reliance on Keely’s teachings of determining pen position, consistent with Patent Owner’s contentions. We further find that the Petition does not include Petitioner’s Reply arguments regarding Geva’s planar element. We conclude that the Petition does not set forth Petitioner’s proposed combination of Keely and Geva argued in the Reply and, therefore, the Reply includes improper, new argument. With respect to Patent Owner’s argument that Petitioner’s Reply and Reply declaration should be disregarded (Sur-reply 3; Paper 33, 1), we need not reach that decision because, as discussed below (see §§ III.D.3.b–c) even upon consideration of Petitioner’s new Reply arguments, Petitioner does not demonstrate that claim 1 is unpatentable. To the extent Patent Owner has not fully explained its opposition to the Petition in its Patent Owner Response, Petitioner must demonstrate that the claims are unpatentable, and that burden never shifts to the patentee. Dynamic Drinkware, 800 F.3d at 1378. We had cautioned Patent Owner that arguments not raised in its Patent Owner Response “may be deemed waived.” Paper 8, 9. We determine that any such waiver is not appropriate here because the Petition does not include Petitioner’s newly raised, improper Reply arguments.” slip op. at 23

  • BurdenFwd all claims patentableNot shown unpatentable

    “CTPG at 36. We, therefore, find that Dr. Bederson’s testimony (Ex. 1002 ¶ 92) does not remedy the deficiency in Geva’s disclosures. Petitioner has not shown that Geva teaches element 1[G]. For the reasons given, after consideration of the assertions and the evidence based on the complete record now before us, we determine that Petitioner has not shown that its combination of Keely and Geva teaches element 1[G] of claim 1.” slip op. at 50

  Patent outcomesUS 9,946,369 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,946,369
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Power2b Inc.No claims unpatentable
  PTAB · Jun 23, 2023 · IPR2022-00315 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 1–18 were not shown unpatentable because the Petition did not establish that Keely and Geva teach the touch-sensitive display plane or provide sufficient reasoning to combine them.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on the complete record now before us, we maintain our determination in the Institution Decision (Inst. Dec. 8) that Petitioner’s proposed definition is consistent with the level of skill reflected in the 3 Patent Owner does not present objective evidence of non-obviousness into the complete record now before us. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art, except without the “at least” phrase. Our analysis and determinations herein, however, do not turn on which level of skill we adopt.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “federal courts, in other words, “the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b),” which is articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2020). Under this standard, the words of a claim generally are given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips, 415 F.3d at 1312–13.” slip op. at 9

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We find that paragraph 75 of Dr. Bederson’s original Declaration that his testimony “show[s] how Keely’s touch-sensitive plane can be used as Geva’s planar element” (Ex. 1002 ¶ 75 (emphasis added)) is consistent with Patent Owner’s position that the proposed combination in the Petition does not include Geva’s planar element 14. We find that Dr. Bederson’s testimony that “[p]erhaps I could have been more precise by using the word ‘with’ in place of ‘as’ in this sentence, since that is what Geva itself teaches and what I relied on in forming my opinions” (Ex. 1044 ¶ 13) is not a clarification of his initial testimony, but, instead, is a clear revision of his testimony and his opinion. Dr. Bederson’s testimony regarding “using the word ‘with’ in place of ‘as’” (id.) is improper new testimony in his Reply Declaration. Furthermore, Dr. Bederson’s testimony that his new opinion is supported by “what Geva itself teaches” (id.) is not consistent with Geva’s teachings. Geva does not refer to Keely’s LCD or any LCD similar to that in Keely with a digitizer grid, but instead, Geva describes “[a]dvantageously, the position-determining input device does not require a specific, active board with in-built sensors for determining positions.” Ex. 1011, 3:7–9. which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). Here, Dr. Bederson’s original Declaration (Ex. 1002) does not disclose facts or data showing a reliance on Geva’s planar element 14 or any LCD other than the LCD described in Keely, which incorporates by reference the hardware of Keely II.” slip op. at 28

  • BurdenFwd all claims patentableNot shown unpatentable

    “After consideration of the assertions and the evidence of record based on the complete record now before us, we determine that Petitioner has not shown that the combination of Keely and Geva teaches element 1[B]. Accordingly, we conclude that Petitioner has not demonstrated by a preponderance of the evidence that it would prevail in showing that claim 1 is unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of Keely and Geva.” slip op. at 40

  Patent outcomesUS 10,664,070 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,664,070
• Streck, Inc. / Streck LLC v. Ravgen, Inc.No claims unpatentable
  PTAB · Apr 18, 2023 · IPR2021-01577 · APJ Timothy G Majors · IPR · Final written decision

  Claims 55–61, 68, 69, 80–86, 89–92, 94, 126–130, 132, and 133 were not shown unpatentable under the asserted anticipation and obviousness grounds.

  RulingsFinal written decision

  • Strike new argumentNew argument consideredDenied

    “III. MOTIONS Motion to Strike (Paper 50) Petitioner filed a motion to strike portions of Patent Owner’s Sur- Reply. Paper 50. Patent Owner opposes the motion. Paper 53. Petitioner contends Patent Owner raised new argument about Exhibit 1014 (a paper authored by Dr. Patterson), which was submitted with the filing of the Petition but only cited by Patent Owner for the first time in its Sur-Reply. Paper 50, 1–3; PO Sur-Reply 14 (citing Ex. 1014). According to Petitioner, Patent Owner presents new argument about the reversibility of certain crosslinks caused by formaldehyde, cites new experimental data (in Ex. 1014, Fig. 2.1), and argues such matters would have been known before any possible priority date of the ’277 patent. Paper 50, 1–3. Moreover, Petitioner argues, the untimeliness of Patent Owner’s arguments about Exhibit 1014 prevented the exhibit’s author, Dr. Patterson, from addressing them to provide explanation or context. Id. at 2–3. For the reasons given below, we deny Petitioner’s motion to strike. First, we find that Patent Owner’s arguments on Exhibit 1014 are, on balance, responsive to issues raised by Petitioner in its Reply. It is true that Petitioner submitted Exhibit 1014 with its Petition and that Patent Owner did not cite it until its Sur-Reply. However, the points raised by Patent Owner about Exhibit 1014 respond to certain of Petitioner’s arguments raised for the first time in its Reply. For example, Petitioner argued a POSA would not have been concerned about formaldehyde’s use (such as cross-linking disclosed in Heinmoller that Patent Owner cited in its Response) and that those concerns arose only after the supposed priority date of the ’277 patent. 88 Pet. Reply 8–9. Patent Owner’s citation of Exhibit 1014 is responsive on such points (e.g., it discusses cross-linking with formaldehyde’s use), it published in 2000 and is thus earlier than some references Petitioner argued were too late to evidence a POSA’s knowledge, and, lastly, it was authored by Dr. Patterson and arguably called into question the credibility of rebuttal opinions he offered about the state of a POSA’s knowledge on such issues. Second, Exhibit 1014 does not, ultimately, help Patent Owner as we do not rely on the portions of Exhibit 1014 cited by Patent Owner or Patent Owner’s argument about them. As discussed in our analysis, if cross-linking (as reported in Heinmoller or, for that matter, Exhibit 1014) was a perceived problem, Dr. Patterson provides a credible explanation how it could be and likely was addressed by Pertl.54 Supra Section II(G)(3) (citing Ex. 1047).” slip op. at 88

  • ExcludeDenied

    “by the non-designating party. See generally Paper 60. We nevertheless reviewed the designated testimony. The objections are overruled, but were also considered during review.” slip op. at 90

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “evidence that any of the challenged claims are unpatentable based on grounds advanced in the Petition.” slip op. at 93

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “3. Conclusion For the reasons above, we find Petitioner has not established by a preponderance of the evidence that the combination of Chiu/Lee discloses “an agent that inhibits cell lysis, if cells are present” as recited in independent claims 55 and 81, and the claims depending therefrom. Accordingly, Petitioner has not established that claims 55–59, 61, 68, 69, 80–86, 89, 94, and 126–130 would have been obvious over Chiu and Lee.” slip op. at 52

  Patent outcomesUS 7,332,277 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,332,277
• Illumina, Inc. v. Ravgen, Inc.No claims unpatentable
  PTAB · Jan 25, 2023 · IPR2021-01271 · APJ David Cotta · IPR · Final written decision

  Claims 1, 3–9, 21, 22, and 24–30 were not shown unpatentable because Illumina did not prove that glucose in the cited ACD samples necessarily impeded cell lysis.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner did not expressly contest this definition during trial, noting only that “Dr. Van Ness meets [this] definition” and “confirms [that] his opinions are the same under either party’s definition.” PO Resp. 6 (citing Ex. 2239 ¶¶ 20–25). To the extent there are minor differences in the above 14 definition and the alternative definition offered by Dr. Van Ness (Ex. 2239 ¶ 23), Dr. Van Ness’s proposal is too broad for at least the reason that it does not require the POSA have experience collecting and analyzing cell-free DNA from blood samples—subject matter relevant to the claims and applied art. Accordingly, we continue to apply Petitioner’s proposed definition here.13 In any event, the parties’ technical declarants meet or exceed either definition and there is no indication that their opinions would change depending on which definition was applied, and no argument from the parties to the contrary. Ex. 1056 ¶¶ 5–10 (overview of qualifications and experience); Ex. 2239 ¶¶ 4–7 (same).” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer foundTerm construed board ownDecided for patent owner

    “presents is whether a claimed agent that inhibits cell lysis may be a chelator used as an anticoagulant. The Specification and prosecution history make clear that at least one anticoagulant chelator—EDTA—is excluded from satisfying the claimed agent as recited in claim 1. As discussed above, the Specification describes an example where a sample processed in a tube with only EDTA is described as processing a sample in the “absence” of an agent that inhibits cell lysis. Ex. 1001, 89:35–57 (describing, in contrast, the EDTA + formalin sample as showing an example in the “presence of inhibitors of cell lysis”). If EDTA alone could be read as meeting the “agent” limitation, that example would make no sense. Petitioner provides no persuasive argument otherwise. The prosecution history buttresses the exclusion of the anticoagulant chelator EDTA from being the claimed “agent.” For example, during prosecution of the related ’277 patent, the Examiner at one point expressly 20 identified the EDTA in the tubes of a prior art reference as satisfying the agent term, prompting applicant’s argument that the Office was “incorrect” in doing so, and further distinguishing EDTA as merely “a well-known chelator of calcium and magnesium” that is added to blood “as an anticoagulant due to its ability to chelate calcium.” Ex. 2064, 1196 (arguing “EDTA is clearly referred to as a chelator in Applicant’s specification, not as a cell lysis inhibitor”); supra Section I(E); Ex. 1001, 32:61–64 (listing EDTA and EGTA as chelators). This, in turn, convinced the Examiner to withdraw the finding that EDTA was an “agent” as claimed and move on to art that disclosed formaldehyde as meeting that claim term. Ex. 2064, 1024 (Examiner interview summary noting that “applicant pointed out [that] EDTA could not be defined as a cell lysis inhibitor but rather was simply an anticoagulant”). This colloquy during prosecution evidences a clear and unmistakable disavowal of EDTA as being the claimed “agent.” Having determined that Patent Owner disavowed EDTA as the claimed “agent,” we next consider whether the disavowal extends more broadly to other anticoagulant chelators and, specifically, to ACD. On this record, we find that it does as explained below. In distinguishing EDTA from being the “agent,” Patent Owner relied not on properties that are unique to EDTA, but on the fact that it was a “well-known chelator” used as an anticoagulant in this technical field. Ex. 2064, 1196. Given Patent Owner’s clear intent to exclude EDTA from the scope of the claimed “agent” on the basis that it was simply an anticoagulant chelator, we find that a POSA would also have understood other anticoagulant chelators as subject to Patent Owner’s disavowal.” slip op. at 20

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner

    “20 Before institution, Patent Owner contested the sufficiency of Petitioner’s showing on whether Landes was entitled to the priority benefit of the filing date of the Landes provisional application. We disagreed that Petitioner’s showing was insufficient. Inst. Dec. 43–47. Patent Owner did not raise any issue during trial about Landes’s prior art status and, thus, has forfeited any argument that Landes is not prior art. On this record, we determine that Landes is § 102(a) prior art based on its July 31, 2003, publication date. On this record, we do not presume the claims of the ’720 patent are entitled to any earlier priority date of other applications listed in its ancestral chain. PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed. Cir. 2008) (explaining that “there is simply no reason to presume that claims in a [CIP] application are entitled to the effective filing date of an earlier filed application”). That is especially true with the patent’s complex priority chain, involving several CIPs leading back to a provisional application filed 26” slip op. at 26

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “Altogether, considering the argument and evidence of record, Petitioner has shown, at best, that it is possible for glucose to help impede cell lysis by reason of isotonicity and providing a nutrient source. But such possibilities are not enough for Petitioner to prevail on its challenge to the claims as anticipated by Landes. In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (“Inherency, however, may not be established by probabilities or 41 possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”) (internal quotation and citation omitted); Guangdong Alison Hi-Tech, 936 F.3d at 1364 (same). Petitioner has not, on this record, met its burden to show that the glucose component of ACD in Landes’s specific method is an “agent that impedes cell lysis” in the manner claimed.” slip op. at 41

  Patent outcomesUS 7,727,720 not shown unpatentable
  Claim construction§ 102 anticipationcites KSR · Graham
  Patents in suitUS 7,727,720
• Illumina, Inc. v. Ravgen, Inc.No claims unpatentable
  PTAB · Jan 25, 2023 · IPR2021-01272 · APJ Timothy G Majors · IPR · Final written decision

  Illumina did not prove claims 55–63, 66–69, 80–91, 94–96, 126–130, 132, and 133 unpatentable because the asserted grounds failed.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner did not expressly contest this definition during trial, noting only that “Dr. Van Ness meets [this] definition” and “confirms his opinions are the same under either party’s definition.” PO Resp. 6 (citing Ex. 2239 ¶¶ 20–25). To the extent there are minor differences in the above definition and the alternative definition offered by Dr. Van Ness (Ex. 2239 ¶ 23), we find that Dr. Van Ness’s proposal is too broad for at least the reason that it does not require the POSA have experience collecting and analyzing cell-free DNA from blood samples—subject matter relevant to the claims and asserted art. Accordingly, we continue to apply Petitioner’s proposed definition here.14 In any event, the parties’ technical declarants meet or exceed either definition and there is no indication that their opinions would change depending on which definition was applied. Ex. 1056 ¶¶ 5–10 (overview of qualifications and experience); Ex. 2239 ¶¶ 4–7 (same).” slip op. at 17

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “that anticoagulant chelators are not the claimed “agent” and, accordingly, that “Landes’s disclosure of ACD (and its dextrose component) fails to meet the ‘agent’ limitation.” Id. at 17–19 (citing the aforementioned prosecution history). Second, even if the dextrose of ACD is not excluded from the scope of the “agent” term as a matter of claim interpretation, Patent Owner argues that Petitioner fails to provide evidence sufficient to show that dextrose in Landes’s ACD tubes and method necessarily “inhibits lysis of cells” as claimed. Id. at 19–20; 26–34 (arguing, inter alia, that a “mere possibility” of ACD’s dextrose component inhibiting lysis in Landes’s method is not enough); PO Sur-Reply 10–12 (arguing that Petitioner’s contentions about dextrose regulating “isotonicity” or providing a “nutrient source” for cells are belated and otherwise substantively flawed).23” slip op. at 32

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “warning against formaldehyde’s use and recommending other fixatives altogether. Id.; Ex. 2150 (Srinivasan), 6 (“A method to overcome the problems of formaldehyde is to use an alternative fixative that is better suited for the preservation of nucleic acids and proteins.”).33 Accordingly, Patent Owner contends that “significant evidence of negative perceptions of formaldehyde” would have dissuaded the modification of Lo proposed by Petitioner. PO Resp. 46–47; PO Sur-Reply 18–20.34 3. Analysis On the complete record developed through trial, we agree with Patent” slip op. at 56

  • Obviousness (§103) › Objective indicia / secondary considerationsNot reached

    “warning against formaldehyde’s use and recommending other fixatives altogether. Id.; Ex. 2150 (Srinivasan), 6 (“A method to overcome the problems of formaldehyde is to use an alternative fixative that is better suited for the preservation of nucleic acids and proteins.”).33 Accordingly, Patent Owner contends that “significant evidence of negative perceptions of formaldehyde” would have dissuaded the modification of Lo proposed by Petitioner. PO Resp. 46–47; PO Sur-Reply 18–20.34 3. Analysis On the complete record developed through trial, we agree with Patent” slip op. at 56

  Patent outcomesUS 7,332,277 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,332,277
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Power2b Inc.No claims unpatentable
  PTAB · Jan 13, 2023 · IPR2021-01257 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 1, 2, 6–8, 13, 14, 16, 18, 19, 21–23, 26, and 30 were not shown unpatentable over Newton or Reime, alone or with Hinckley, because the references did not teach element 1[b].

  RulingsFinal written decision

  • ExcludeOther

    “A. Patent Owner’s Motion to Exclude Patent Owner filed a Motion to Exclude certain of Dr. Bederson’s testimony in his Reply Declaration (Ex. 1035) arguing that the testimony is irrelevant and has little probative value. Mot 1. In particular, Patent Owner 3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103, and was effective on March 16, 2013. Because the challenged claims of the ’170 patent have an apparent effective filing date before March 16, 2013, we refer to the pre-AIA version of 35 U.S.C. § 103. 4 The Petition lists “Ground 3 and 4” as obviousness over Reime and Hinckley (Pet. 3, 46–60 (emphasis omitted)), and Ground 3 appears to be obviousness over Reime alone. Id. at 58. We treat the omission of the explicit obviousness identification of Reime “alone” as a typographical error. and 21 of Exhibit 1035, which Patent Owner argues are introduced for the sole purpose of supporting attorney argument against Patent Owner’s proposed claim constructions (Mot. 1–2); and (2) paragraphs 28, 31, 34, 36, 37, 43, 45, 47, 49, 50–52, 60, and 62 of Exhibit 1035, which Patent Owner argues are introduced for the sole purpose of supporting attorney argument for Petitioner’s Grounds 1–4 (Mot. 2–3). Patent Owner relies on the Federal Rules of Evidence (“FRE” or “Fed. R. Evid.”) 401 through 403 as legal support for its arguments that the identified paragraphs are inadmissible. See generally Mot. In its Opposition, Petitioner provides a table including the testimony in each contested paragraph, along with citations to the record set forth in that testimony, and the corresponding argument in Patent Owner’s Response that the testimony responds to. Opp’n 2–7. Petitioner argues, in contrast to Patent Owner’s arguments, Dr. Bederson’s testimony directly responds to arguments in Patent Owner’s Response and, therefore, is highly relevant and probative of the issues raised by Patent Owner. Id. at 1, 8. Petitioner also argues that Dr. Bederson’s testimony “is replete with citations to the record” and is “well-supported” proper expert testimony. Id. (citing Fed. R. Evid. 702–704; Consolidated Trial Practice Guide (“TPG”)5). Petitioner argues that the probative value of Dr. Bederson’s testimony in his Reply Declaration (Ex. 1035) is not outweighed by any unfair prejudice or confusion. Opp’n 8. Petitioner argues that Patent Owner’s arguments in that regard are conclusory and unsupported. Id. at 7–8.” slip op. at 7

  • Skill levelSkill level board ownDecided for patent owner

    “We find that for the most part Petitioner’s proposed definition is the better definition for purposes of this proceeding, except we again decline to adopt “at least” because that language is vague and open-ended. With respect to the educational qualifications, Petitioner’s proposed qualifications are that one of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field. Pet. 8 (citing Ex. 1002 ¶ 41) (emphasis added). The claims are directed to an interactive assembly comprising at least one input sensor to provide an output indicative of an impingement of an electromagnetic radiation spot. Individuals with bachelor’s degrees in physics would be knowledgeable in researching, designing, or developing such assemblies and would be able to comprehend and evaluate the teachings of the prior art. Accordingly, Petitioner’s proposed qualifications are overly narrow in not including individuals with bachelor’s degrees in physics. With respect to work experience, a person having two years of experience would be able to comprehend and evaluate the teachings of the prior art, consistent with Petitioner’s proposal. technical field, and the asserted prior art, we agree therefore with Patent Owner’s addition of “physics” in its proposed qualifications of the educational level for a person having an ordinary level of skill and we otherwise agree with Petitioner’s proposed qualifications, except without the “at least” language. Based on the complete record now before us, the level of skill that we adopt is set forth immediately below. One of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or a related field, and at least two years of experience in the research, design, development, and/or testing of touch and/or proximity sensors, human-machine interaction and interfaces, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa. We find that the definition set forth above is consistent with the level of skill reflected in the specification of the ’170 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Our analysis and conclusions herein, however, do not turn on whether we adopt Petitioner’s proposed qualifications, Patent Owner’s proposed qualifications, or the qualifications set forth immediately above.” slip op. at 11

  • Prior constructionPrior construction adoptedTerm construed patent owner constructionDecided for patent owner

    “Based on the complete record now before us, we conclude that our preliminary determination in our Decision to Institute adopting Petitioner’s implicit construction of “impingement of an electromagnetic radiation spot” was not correct. Based on the complete record now before us, for the reasons given below, as urged by Patent Owner in its Response (Resp. 8–15), we adopt the same constructions adopted by the District Court, including that “impingement of an electromagnetic radiation spot” should be construed as “an area of reflected or projected radiation.” Because the constructions that we adopt do not differ from that adopted by the District Court and because Patent Owner urged adoption of those constructions in its Patent Owner Response with detailed substantive argument and explanations, Petitioner has had notice and a full opportunity to respond. Indeed, Petitioner has provided responsive argument disputing Patent Owner’s claim constructions prior art reference meets the limitations under Patent Owner’s proposed constructions. Reply 1–5, 22–23. We have considered the arguments and evidence by both parties in the complete record now before us in making our final determinations herein.” slip op. at 17

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “For the reasons given with respect to claim construction (see supra § II.D.2), we conclude that “impingement of an electromagnetic radiation spot” means “an area of reflected or projected radiation,” which is the same as the claim construction provided by the District Court. See Ex. 1034, 4. For the longer claim recital that includes additional language, as well as the same cited phrase, we conclude that the “plain and ordinary meaning” should apply to the remaining language, which is the same as the construction provided by the District Court. See Ex. 1034, 4. We agree with Patent Owner (Resp. 32) that Newton’s teachings relied on by Petitioner describe an object interrupting an energy beam above an exterior surface of a protective barrier as well as a finger touching or contacting the surface)), but Newton does not teach “an output indicative of an impingement of an electromagnetic radiation spot on at least one of the at interactive surface element” recited in claim 1. See, e.g., Ex. 1012, Figs. 2, 3, 6, ¶¶ 13, 25, 48. After consideration of the contentions and the evidence of record, we determine that Petitioner has not shown that either Newton alone or the combination of Newton and Hinckley teaches element 1[b] of claim 1. Accordingly, based on the complete record now before us, we conclude that Petitioner has not established by a preponderance of the evidence that claim 1 is unpatentable under 35 U.S.C. § 103(a) as obvious over Newton alone or with Hinckley.” slip op. at 37

  Patent outcomesUS 9,317,170 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,317,170

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.