• Samsung Electronics Co. Ltd. / Samsung Electronics America, Inc. et al. v. Rosetta-Wireless CorporationRehearing denied
  PTAB · Oct 20, 2017 · IPR2016-00622 · APJ John A Hudalla · IPR · Rehearing

  The Board denied Rosetta’s rehearing request, finding it had not shown the Board overlooked or misapprehended its § 318(a) and constitutional arguments.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. See 37 C.F.R. § 42.71(d).” slip op. at 2

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Not reached

    “property right. Req. Reh’g 4–5. Thus, Rosetta contends “[i]nter partes review is an adjudicatory proceeding which, as in this case, may result in extinguishment of a patentee’s property rights by action of the Board and without the right to trial by jury.” Id. at 3. According to Rosetta, this violates the Seventh Amendment and Article III of the Constitution. Id. Rosetta cites to a pending case before the U.S. Supreme Court that has taken up this issue. Id. (citing Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 137 S. Ct. 2239 (2017)). Accordingly, Rosetta asks us to vacate our Final Written Decision. Id. at 6. Rosetta never made arguments during trial about the purported unconstitutionality of inter partes review. Nor does Rosetta’s request for rehearing attempt to identify such arguments in the trial record. As such, we could not have misapprehended or overlooked this issue.” slip op. at 4

  None
  Patents in suitUS 7,149,511
• Tokyo Electron Limited v. Daniel L. FlammInstitution denied
  PTAB · Oct 4, 2017 · IPR2017-01072 · APJ Kimberly Mcgraw · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving claims 13–26, 64, and 65 unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Under 35 U.S.C. § 314(a), 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.” Taking into account the arguments presented in the Petition and Preliminary Response, we conclude that Petitioner has not established a reasonable likelihood of prevailing with respect to the unpatentability of claims 13–26, 64, and 65. Accordingly, we do not institute an inter partes review on those claims.” slip op. at 2

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

    “Thus, the ordinary meaning of the claim language itself requires predetermining the temperature change (i.e., the change from the selected first substrate holder temperature to the selected second substrate holder temperature) within a specific interval of time (i.e., the time for changing from the selected first substrate holder temperature to the selected second substrate holder temperature), and based on that predetermination, selecting the thermal mass of the substrate holder. A construction that does not require selecting a thermal mass for a particular temperature change and a specified interval of time, as opposed to selecting a thermal mass that can facilitate or allow a temperature change, is not consistent with the plain and ordinary meaning of the claim. We recognize that the thermal mass of a substrate holder is not the only factor that controls the rate of temperature change of the substrate holder. See, e.g., Ex. 1001, 16:60–67 (stating that the “heat exchanger, fluid flow rate, coolant-side fluid temperature, heater power, chuck, etc. should be designed to bring the fluid to a setpoint temperature and bring the temperature of the chuck and wafer to predetermined temperatures within specified time intervals and within specified uniformity limits”). The plain language of the claim, however, still requires that the thermal mass of the substrate holder be selected for a predetermined temperature change within the specific interval of time.” slip op. at 13

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

    “We do not construe these limitations as requiring the involvement of a heat transfer fluid. “Heat transfer fluid” is not recited in the claims. Although the claims are interpreted in light of the specification, it is improper to read limitations from the specification into the claims. See, e.g., In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993); see also Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012) (“It is likewise not enough that the only embodiments, or all of the embodiments, contain a particular limitation. We do not read limitations from the specification into claims; we do not redefine words.”). As such, we are not persuaded that that the phrases “substrate holder,” “heat transfer device,” and “selected thermal mass,” as recited in claim 13, should be construed as requiring the involvement of “heat transfer fluid.”” slip op. at 11

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

    “3. Remaining Claim Terms For purposes of this Decision, based on the record before us, we determine that none of the remaining claim terms require an explicit construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 16

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
• Smith & Nephew, Inc. v. Conformis, Inc.Institution denied
  PTAB · Sep 12, 2017 · IPR2017-00984 · APJ James A Worth · IPR · Institution

  The Board denied institution after finding no reasonable likelihood that claims 1–25, 28, 29, 32–46, and 50–64 were unpatentable under the asserted obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under [35 U.S.C. §] 311 and any response filed under [35 U.S.C. §] 313 shows that 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); see also 37 C.F.R. § 42.108. For the reasons set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood that claims 1–25, 28, 29, 32–46, and 50–64 are unpatentable. Accordingly, we do not institute an inter partes review of claims 1–25, 28, 29, 32–46, and 50–64 of the ’827 patent based on the grounds asserted in the petitions.” slip op. at 2

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

    “As to “references the osteophyte,” Petitioner states that the ’827 patent does not define the term “reference,” but argues the broadest reasonable construction of the limitation includes “at least a patient-specific surface that engages or avoids an osteophyte.” Id. Patent Owner does not address this issue directly in this proceeding. For purposes of this Decision, we determine that the broadest reasonable construction of the “references the osteophyte” limitation includes a patient specific surface that “engages or avoids the osteophyte,” consistent with the embodiments of Figures 32 and 33 of the ’827 patent. We note that dependent claims 2 and 3 use the phrase “not engage” with respect to a “second osteophyte.” Ex. 1001, 119:30, 119:36–37 (claims 2, 3). Nevertheless, dependent claims 4 and 5 require that the patient-specific surface “substantially engage[s]” an osteophyte (id. at 119:41–46), and therefore the principle of claim differentiation indicates that independent claim 1 has a broader scope than dependent claims 4 and 5.” slip op. at 8

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

    “The next question is whether referencing osteophytes is the “natural result flowing from” Radermacher’s technique, under the aforementioned Oelrich test, or whether it otherwise would have been obvious to apply Radermacher’s technique to a bone surface with osteophytes. Petitioner argues that it would have been obvious to apply Radermacher’s technique to a bone surface with osteophytes because (1) such a template would be a negative of the “natural (i.e. not pre-treated) surface”; (2) referencing any osteophyte would, in some cases, aid in alignment because the unique structure of the osteophyte would help ensure that the template was placed in the proper position; and (3) it would eliminate the need to pre-treat the joint to remove the osteophyte in a preliminary surgical step, thus reducing surgical time and improving patient safety. Pet. 30 (citing, e.g., Ex. 1003, 10, 12; Ex. 1002 ¶¶ 116–117).” slip op. at 14

  • BurdenNot shown unpatentable

    “Thus, the prior art relied upon in the asserted ground does not disclose referencing an osteophyte, expressly or inherently. Additionally, Petitioner does not provide adequate evidence that it would have been obvious to apply the technique of Radermacher in patients with osteophytes to engage (or avoid or reference) the osteophyte, as opposed to performing an alternate technique, such as first removing the osteophytes. In particular, Petitioner has not provided adequate evidence of a reasonable likelihood of success of applying Radermacher’s technique to a bone surface with osteophytes beyond unsupported and conclusory assertions thereof. For these reasons, we determine that Petitioner has not demonstrated a reasonable likelihood that the combination of Radermacher and Alexander renders obvious independent claim 1. Accordingly, we determine that Petitioner has failed to establish a reasonable likelihood that it would prevail in its assertion that independent claim 1, or dependent claims 2–13, 32, 38, and 44–46, are unpatentable as obvious over Radermacher and Alexander.5” slip op. at 17

  Claim construction§ 103 obviousness
  Patents in suitUS 8,657,827
• Smith & Nephew, Inc. v. Conformis, Inc.Institution denied
  PTAB · Sep 12, 2017 · IPR2017-00983 · APJ James A Worth · IPR · Institution

  The Board denied both petitions and instituted no trial, finding no reasonable likelihood that claims 1–25, 28, 29, 32–46, or 50–64 were unpatentable on the asserted obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under [35 U.S.C. §] 311 and any response filed under [35 U.S.C. §] 313 shows that 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); see also 37 C.F.R. § 42.108. For the reasons set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood that claims 1–25, 28, 29, 32–46, and 50–64 are unpatentable. Accordingly, we do not institute an inter partes review of claims 1–25, 28, 29, 32–46, and 50–64 of the ’827 patent based on the grounds asserted in the petitions.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “unexpired patent according to the broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs. v. Lee, LLC, 136 S. Ct. 2131, 2142–46 (2016). Under that standard, and absent any special definitions, we give claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms must be set forth with reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner requests a construction of the term “references the osteophyte.” Pet. 17–18. Patent Owner does not propose construction of any terms. As to “references the osteophyte,” Petitioner states that the ’827 patent does not define the term “reference,” but argues the broadest reasonable construction of the limitation includes “at least a patient-specific surface that engages or avoids an osteophyte.” Id. Patent Owner does not address this issue directly in this proceeding. For purposes of this Decision, we determine that the broadest reasonable construction of the “references the osteophyte” limitation includes a patient specific surface that “engages or avoids the osteophyte,” consistent with the embodiments of Figures 32 and 33 of the ’827 patent. We note that dependent claims 2 and 3 use the phrase “not engage” with respect to a “second osteophyte.” Ex. 1001, 119:30, 119:36–37 (claims 2, 3). Nevertheless, dependent claims 4 and 5 require that the patient-specific surface “substantially engage[s]” an osteophyte (id. at 119:41–46), and therefore the principle of claim differentiation indicates that independent claim 1 has a broader scope than dependent claims 4 and 5.” slip op. at 7

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

    “The next question is whether referencing osteophytes is the “natural result flowing from” Radermacher’s technique, under the aforementioned Oelrich test, or whether it otherwise would have been obvious to apply Radermacher’s technique to a bone surface with osteophytes. Petitioner argues that it would have been obvious to apply Radermacher’s technique to a bone surface with osteophytes because (1) such a template would be a negative of the “natural (i.e. not pre-treated) surface”; (2) referencing any osteophyte would, in some cases, aid in alignment because the unique structure of the osteophyte would help ensure that the template was placed in the proper position; and (3) it would eliminate the need to pre-treat the joint to remove the osteophyte in a preliminary surgical step, thus reducing surgical time and improving patient safety. Pet. 30 (citing, e.g., Ex. 1003, 10, 12; Ex. 1002 ¶¶ 116–117).” slip op. at 14

  Claim construction§ 103 obviousness
  Patents in suitUS 8,657,827
• Micron Technology, Inc. v. President And Fellows Of Harvard CollegeRehearing denied
  PTAB · Aug 17, 2017 · IPR2017-00662 · APJ Christopher M Kaiser · IPR · Rehearing

  The Board denied Harvard’s rehearing request, leaving institution in place on anticipation by Buchanan and obviousness over Buchanan and the knowledge of an ordinarily skilled artisan for claims 24, 26, and 29.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “We will grant a request for rehearing of a petition decision if the requesting party demonstrates “an abuse of discretion” in the decision. 37 C.F.R. § 42.71(c). That party must also “specifically identify . . . the place where each matter [that we misapprehended or overlooked] was previously addressed.” Id. § 42.71(d). After considering Patent Owner’s request for rehearing, our decision, and the evidence currently of record, we determine Patent Owner has not demonstrated an abuse of discretion. Accordingly, we deny the request for rehearing.” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted

    “We are not persuaded that, based on the current record, we have misinterpreted Buchanan’s disclosure. First, Buchanan’s Example 3 does not state, as Patent Owner argues, “that the inventive method can be expanded from forming a multicomponent metal oxide as specifically described in Example 3, to forming a single metal oxide by ‘utilizing one precursor source mixture which contains only one precursor.’” Request 5. Patent Owner leaves out a portion of the statement, which says that the method “can be expanded to include growth of any single component metal, metal oxide, metal nitride or metal silicide film.” Ex. 1005, 20:63–67 (emphasis added). If the statement were to be limited to the use of one of the two precursors discussed in Example 3, it would mean that the method could be expanded only to deposit films containing either zirconium or hafnium, not to films based on “any . . . metal.” It may be that the evidence adduced at trial will show that “any . . . metal” should be interpreted as limited to zirconium and hafnium, but it is not apparent from the present record why this should be the case. If our conclusion on this record that Example 3 can be expanded to include the deposition of films based on any metal is correct, however, then it follows that the use of precursors other than zirconium nitrate and hafnium tertbutoxide is contemplated.” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted

    “tetrakis(dimethylamino) hafnium, and tetrakis(diethylamino) hafnium in particular would have been selected as better in Buchanan’s Example 3 than any of the other compounds disclosed by Buchanan.” Request 13–15. As discussed above, we are persuaded that Petitioner has shown sufficiently for purposes of instituting review that, at least on the present record, Buchanan discloses using any of its suitable precursors in the method of its Example 3. Given this, Petitioner was not required to show that these particular compounds “would have been selected as better . . . than any of the other compounds disclosed by Buchanan” in order for us to conclude that Petitioner had shown a reasonable likelihood of succeeding in demonstrating the obviousness of claims 24, 26, and 29 over the combination of Buchanan and the knowledge of a person of ordinary skill in the art. The law does not require that the use of the claimed compound be “better . . . than [the use of] any of the other disclosed compounds,” because “[a] finding that the prior art as a whole suggests the desirability of a particular combination need not be supported by a finding that the prior art suggests that the combination claimed . . . is the preferred, or most desirable, combination.” Bayer Healthcare Pharms., Inc. v. Watson Pharms., Inc., 713 F.3d 1369, 1376 (Fed. Cir. 2013) (quoting In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004)). Instead, it requires only that the person of ordinary skill in the art would have had a reason to combine the teachings of the prior art. Here, to support its obviousness ground, Petitioner will need to show at trial that a person of ordinary skill in the art would have had a reason to combine Buchanan’s teaching in Example 3 of a particular ALD process with Buchanan’s teaching that “tetrakis(dimethylamino), [and] tetrakis (diethylamino) Ti, Zr, Hf, Si, Ge, Sn, or Pb” were suitable precursors for use in an ALD process. In our Institution Decision, we were persuaded that, given Buchanan’s disclosure of using any suitable precursor in the process of Example 3, Buchanan’s disclosure that any of its precursors were suitable for use in any ALD process, and the description of these particular precursors as “preferred” and “highly preferred,” Petitioner had demonstrated a reasonable likelihood that it would succeed in making this showing at trial. We are not persuaded by Patent Owner’s argument that we abused our discretion in coming to this conclusion.” slip op. at 15

  • Expert testimonyPetitioner expert creditedDecided for patent owner

    “Banerjee, testified “that a person of ordinary skill ‘would have at once envisaged’ the use of Buchanan’s named precursors in Buchanan’s Example 3.” Paper 11, 9 (quoting Ex. 1003 ¶ 134). Although we noted that this testimony was disputed by Patent Owner’s declarant, Dr. Gladfelter, we were required to resolve the factual dispute in the light most favorable to Petitioner for purposes of the Institution Decision. Id. (citing 37 C.F.R. § 42.108(c); Ex. 2101 ¶ 127). Patent Owner now argues that Dr. Banerjee’s testimony is entitled to no weight because it “is in the form of conclusory statements and fails to adequately explain why one of ordinary skill ‘would have at once envisaged’ the use of Buchanan’s named precursors in Example 3.” Request 10–11. Patent Owner cites to page 21 of its Preliminary Response as the place where it raised this argument previously. Id. at 10. Patent Owner did not previously raise the argument that Dr. Banerjee’s testimony is entitled to no weight, either on page 21, or on any other page, of its Preliminary Response. Under our rules, a party requesting rehearing must “specifically identify . . . the place where each matter [that we misapprehended or overlooked] was previously addressed.” 37 C.F.R. § 42.71(d). Accordingly, we will not grant Patent Owner’s request for rehearing on this basis. Moreover, we note that Dr. Banerjee’s testimony cites to Buchanan’s statement that “[t]he precursor source mixture of the present invention can be used in any CVD or ALD process with any delivery means currently employed” as the reason that a person of ordinary skill in the art “would have at once envisaged that the other precursors are applicable to Example 3.” Ex. 1003 ¶ 134 (quoting Ex. 1005, 7:30–34). We need not determine at this point whether this reasoning is sufficient, in light of Dr. Gladfelter’s testimony to the contrary, to establish as a factual matter that a person of ordinary skill in the art actually “would have at once envisaged that the other precursors are applicable to Example 3,” which is an issue to be determined at trial. We do note, however, that, contrary to Patent Owner’s argument, Dr. Banerjee does offer at least some explanation for his opinion.” slip op. at 11

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 6,969,539
• Fitbit, Inc. v. Aliphcom, Inc. D/B/A JawboneAll claims unpatentable
  PTAB · Aug 15, 2017 · IPR2016-00607 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 16–19, 23, and 26 are unpatentable as anticipated by Lo; claims 20–22, 24, and 25 are unpatentable as obvious over the specified combinations.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “The broadest reasonable interpretation standard is intended to address just such situations, to encourage patentees to resolve ambiguities in claim language and encourage precision in claim drafting. See Cuozzo, 136 S. Ct. at 2145 (“use of the broadest reasonable construction standard . . . encourages the applicant to draft narrowly. This helps ensure precision while avoiding overly broad claims.”). Therefore, when faced with a claim term which has multiple reasonable interpretations in light of the specification, we must choose the broadest that is still reasonable. Here, that is the interpretation that encompasses a molding formed substantially across a side of the inner molding. We note, however, that we do not read the term as broadly as Fitbit implies, such that “substantially” would permit a small amount of coverage of that single side. We agree with Jawbone that this term of degree was intended to capture insubstantial differences in coverage, such as that depicted in Figure 9 (wherein the outer molding does not cover plug 904 and button 906). Accordingly, an outer molding that is formed substantially across a single side of an inner molding, would “cover all or 7 In our Decision on Institution, we phrased this interpretation as “on top of,” but did not intend to introduce a directional component (such as “above”) to the claim term that is unsupported by the ’811 patent. As Dr. Young understood, “the ‘top’ of the inner molding is the surface of the inner molding, not just the side that happens to point up as the ‘top’ when viewed in a cross-sectional image.” Ex. 2001 ¶ 47. To remove any potential confusion, we have rephrased the interpretation as “across a side of.” substantially all” of that inner molding within the broadest reasonable interpretation in light of the ’811 patent specification.” slip op. at 22

  • Expert testimonyPatent owner expert discountedPetitioner expert creditedDecided for petitioner

    “The problem with Dr. Young’s testimony—and, in turn, Jawbone’s position—is that it rests on a flawed premise. Contrary to Dr. Young’s statements, the ’811 patent does not state conclusively that the purpose of the outer molding recited in claim 16 is protection of the inner molding. The specification states that the outer molding “may also be configured to completely enclose or encase an underlying item in order to protect the inner molding, the protective layer, and any elements from damage.” Ex. 1001, 7:29–32 (emphasis added). But the specification also states that the outer molding may be used to provide “surface ornamentation” to an object. Id. at 6:6–8. Furthermore, the specification acknowledges that “protective” is used in two contexts in the patent: providing protection to the structure to which it is applied, but also “a protective property may be a characteristic of a coating that, when applied, protects a wearer or users” (for example, an anti-bacterial property). Id. at 12:36–51 (emphasis added). Neither Jawbone nor Dr. Young address why, if the purpose of the outer molding is to protect a user, it would be necessary to fully enclose the inner moldings instead of merely covering the surface that is to be in contact with a user. Dr. Young also cites, as evidence of the protective nature of the outer molding, several dependent claims which recite that the outer molding has protective features such as “protect[ing] against ultraviolet radiation” (claim 4) or a “waterproof seal” (claim 6). Ex. 2001 ¶ 51. The flaw in this argument is that these dependent claims depend from claim 1, not claim 16. While they may signal that the outer molding of claim 1 has a protective purpose, they are not relevant to claim 16. By contrast, claim 16 recites that at least one of the inner moldings has a protective property, and the dependent claims further specify protective properties for that inner molding, such as waterproofing, oleophobicity (fingerprint resistance), or antibacterial. Dr. Young hypothesized that there might be a reason to make an inner molding antibacterial, even if it is completely enclosed (Ex. 1029 61:4–13), but was unable to provide a single example of a product with a fully encased, antibacterial inner molding (id. at 62:24–63:7). The fact that claim 16’s inner molding has a protective property, therefore, diminishes the credibility of Dr. Young’s testimony that the outer molding must fully encase and protect the inner molding. In sum, we disagree with Dr. Young’s conclusion that the outer molding of claim 16 must have a protective property, and that in that context the only reasonable construction of “covers all or substantially all” is a molding that encases or encloses the inner molding.5 Jawbone’s remaining” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Reviewing Fitbit’s assertions regarding the written description and figures of Lo, we find that the reference discloses in a single embodiment all limitations of claim 16. Jawbone does not challenge the Petition as to the first two steps of claim 16, and we find that Lo discloses both applying a protective material substantially over one or more of a plurality of elements, and forming a protective inner molding substantially over that protective material. Furthermore, for the reasons discussed above, we find that Lo’s transmission medium is an outer molding that covers all or substantially all of the inner molding. With respect to dependent claims 17–19, 23, and 26, we find that Lo discloses the additional elements of these claims as set forth by Fitbit in its Petition. Pet. 24–28. For example, claim 18 requires that the protective property of the inner molding is waterproofing, and claim 19 recites water-resistance. We find that Lo discloses that its plastic housing provides water resistant properties. Ex. 1003, Abstract, ¶ 121. Jawbone does not contest any of these additional claim limitations or argue separately the patentability of the dependent claims apart from independent claim 16. Instead, Jawbone relies on its argument that there is no outer molding as recited in claim 16 (PO Resp. 23), and that Fitbit improperly combined embodiments (id. at 26), arguments we discussed and rejected above. For these reasons, and based on a review of the complete record, we find claims 16–19, 23, and 26 are anticipated by Lo.” slip op. at 28

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “Fitbit responds by arguing that, even if Lo requires ultrasonic transmission, a person of skill in the art “would have naturally selected a coating that does not render the Lo heart monitor useless.” Pet. Reply 23. While this is true, it also admits the premise of Jawbone’s argument. In other words, if the coatings of Huang render Lo’s monitor useless, a person of ordinary skill would not have combined Huang with Lo. Nevertheless, we do not agree with Jawbone’s characterization of Lo as describing ultrasonic transmission of the monitor as “critical.” The portion of Lo cited by Jawbone describes prior art devices, and states that “[p]rior ultrasonic monitors require applying water or an aqueous gel between the transducer module and the living subject to eliminate any air gap.” Ex. 1003 ¶ 17 (emphasis added). There is no statement that the plastic housing of the module—the “inner molding” of claim 16 that must have the protective properties supplied by Huang—must be ultrasonically transmissive. Indeed, it is the transmission medium of Lo that is explicitly described as having ultrasonic transmission properties, and Lo’s transmission medium addresses this deficiency in prior art devices. Id. at 58–59. Lo does not state whether its plastic housing is suitable for ultrasonic transmission, and there is no basis for concluding that the addition of Huang’s coatings—whether or not they disrupt ultrasonic transmission— would result in a non-functional device. We find that Fitbit, relying on the testimony of Dr. Cairns, has articulated a reason with rational underpinning for combining the coatings of Huang with the device of Lo. Pet. 29–30 (stating that it would have been obvious to “utilize the well understood application of hydrophobic materials, such as in Huang, to have imparted protective properties to the plastic housing in Lo”); Ex. 1002 ¶¶ 64–66. This combination would have been within the level of ordinary skill in the art, on which the experts largely agree.9 Jawbone’s arguments do not convince us otherwise. Furthermore, we find that the combination of Lo and Huang in this manner teaches all limitations of claims 20–22 for the reasons given by Fitbit, assertions that” slip op. at 30

  Patent outcomesUS 8,529,811 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,529,811
• Neste Oil Oyj v. Reg Synthetic Fuels, LLCSome claims unpatentable
  PTAB · Jul 26, 2017 · IPR2013-00578 · APJ Christopher L Crumbley · IPR · Remand

  Claims 1, 3, 4, and 8 are unpatentable as anticipated by Craig; claims 2 and 5 are not proven unpatentable because Dindi is not prior art.

  RulingsRemand decision

  • RemandDecided for patent owner

    “To remove Dindi as a prior art reference, the record must establish either: (1) a conception and reduction to practice before the filing date of Dindi; or (2) a conception before the filing date of the Dindi patent combined with diligence and reduction to practice after that date. See Taurus IP, LLC v. DaimlerChrysler Corp., 726 F.3d 1306, 1323 (Fed. Cir. 2013). The Federal Circuit held that the record before us establishes, with sufficient corroboration, that Mr. Abhari conceived of the invention of claims 2 and 5 of the ’804 patent on April 29, 2008. REG Synthetic Fuels, 841 F.3d at 963. It is undisputed that Dindi was filed on June 13, 2008, and that Mr. Abhari filed on December 4, 2008 the application that issued as the ’804 patent. Dindi is not prior art—and, therefore, Neste’s ground of unpatentability fails—if either: (1) Mr. Abhari actually reduced to practice the invention of claims 2 and 5 between April 29 and June 13, 2008, or (2) Mr. Abhari exercised reasonably continuous diligence between June 13 and December 4, 2008, when the invention was constructively reduced to practice by filing of a patent application. Because, as set forth below, we find sufficient evidence of actual reduction to practice, we do not address Mr. Abhari’s alleged diligence.” slip op. at 5

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedNot shown unpatentableNot shown unpatentable

    “To remove Dindi as a prior art reference, the record must establish either: (1) a conception and reduction to practice before the filing date of Dindi; or (2) a conception before the filing date of the Dindi patent combined with diligence and reduction to practice after that date. See Taurus IP, LLC v. DaimlerChrysler Corp., 726 F.3d 1306, 1323 (Fed. Cir. 2013). The Federal Circuit held that the record before us establishes, with sufficient corroboration, that Mr. Abhari conceived of the invention of claims 2 and 5 of the ’804 patent on April 29, 2008. REG Synthetic Fuels, 841 F.3d at 963. It is undisputed that Dindi was filed on June 13, 2008, and that Mr. Abhari filed on December 4, 2008 the application that issued as the ’804 patent. Dindi is not prior art—and, therefore, Neste’s ground of unpatentability fails—if either: (1) Mr. Abhari actually reduced to practice the invention of claims 2 and 5 between April 29 and June 13, 2008, or (2) Mr. Abhari exercised reasonably continuous diligence between June 13 and December 4, 2008, when the invention was constructively reduced to practice by filing of a patent application. Because, as set forth below, we find sufficient evidence of actual reduction to practice, we do not address Mr. Abhari’s alleged diligence.” slip op. at 5

  • ExcludeNot reached

    “As noted above, the Federal Circuit vacated our decision on Neste’s Motion to Exclude as to Exhibits 2012, 2013, 2057, and 2062, for further consideration of the hearsay objections in light of the decision on appeal, “because [they] may be relevant for diligence and reduction to practice.” REG Synthetic Fuels, 841 F.3d at 965. Upon review, however, we have determined that we need not rely on any of the exhibits in question to reach our decision in REG’s favor. For this reason, Neste’s objections to the exhibits are moot, as we would have found against Neste on the merits regardless of the outcome of the Motion.” slip op. at 19

  Patent outcomesUS 8,231,804 mixed
  § 102 anticipation
  Patents in suitUS 8,231,804
• Micron Technology, Inc. v. President And Fellows Of Harvard CollegeInstitution denied
  PTAB · Jul 24, 2017 · IPR2017-00666 · APJ Jon B Tornquist · IPR · Institution

  The Board denied institution because the petition did not show a reason to replace Min’s TEMAT precursor with Vaartstra’s metal alkylamide mixtures in the claimed ALD process.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “In view of the foregoing, we determine that Petitioner has not set forth sufficient articulated reasoning supported by factual underpinnings to explain why one of ordinary skill in the art would have sought to replace TEMAT in Min’s process with the multi–metal alkylamide precursor mixtures of Vaartstra. Accordingly, Petitioner has not demonstrated a reasonable likelihood that claim 1 of the ’016 patent would have been obvious over the combination of Vaartstra and Min set forth in the Petition.” slip op. at 12

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

    “advantageous . . . because it allows for strict control of the thickness of the formed layer”), 2:39–45 (explaining that Vaartstra’s CVD process provides “multi–metallic films having metal stoichiometries within tight specifications”); Prelim. Resp. 26–27. Thus, on this record, we agree with Patent Owner that Petitioner has not explained sufficiently why one of ordinary skill in the art would have sought to use Vaartstra’s precursors in Min’s process “to achieve a goal that has already been achieved” in Vaartstra. Prelim. Resp. 26. To the extent Petitioner proposes modifying Vaartstra by applying Min’s ALD process, Petitioner does not identify any advantages in doing so that are not already present in Min. Pet. 43 (“A POSA would further have understood that Min’s ALD process with TEMAT provides these benefits.”). In short, regardless of whether the combination is analyzed as using Vaartstra’s precursors in Min’s ALD process, or as modifying Vaartstra’s process from a CVD process to Min’s ALD process, Petitioner has not shown why this modification would provide any benefit over Min’s ALD process using TEMAT.” slip op. at 9

  § 103 obviousnesscites KSR
  Patents in suitUS 8,334,016
• Lavelle Industries, Inc. v. Danco, Inc.Institution denied
  PTAB · May 4, 2017 · IPR2017-00159 · APJ Patrick R Scanlon · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1, 6, 11, or 14 unpatentable on any asserted ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “We have jurisdiction under 35 U.S.C. § 314, which provides that inter partes review may not be instituted unless “the information presented in the petition . . . and any [preliminary] response . . . shows that 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). Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are not persuaded that Petitioner has demonstrated, under 35 U.S.C. § 314(a), a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims. Accordingly, we do not institute an inter partes review of any claim.” slip op. at 2

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “B. Level of Ordinary Skill in the Art In determining whether an invention would have been obvious at the time it was made, 35 U.S.C. § 103 requires us to resolve the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors that may be considered in determining the level of ordinary skill in the art include, but are not limited to, the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. Id. In a given case, one or more factors may predominate. Id. Petitioner does not propose a level of ordinary skill in the art. Relying on the testimony of Mr. Jones, Patent Owner, asserts that a person of ordinary skill in the art “typically would have had (a) a bachelor’s degree in mechanical engineering, or a related field, and at least two years of experience in the design of plumbing components; or (b) a high school degree and at least four years of experience in the design of plumbing components.” Prelim. Resp. 19 (citing Ex. 2003 ¶ 24). Mr. Jones testifies that his opinion is based on his “experiences working in the field of product design in the plumbing industry in addition to the specification and claims of the ‘455 Patent in light of the state of the art in the 2012 time frame.” Ex. 2003 ¶ 24. We determine that the level of ordinary skill proposed by Mr. Jones is consistent with the challenged patent and the asserted prior art, and we therefore adopt this definition of the level of ordinary skill in the art for the purposes of the analysis below.” slip op. at 10

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “We are not persuaded by Petitioner’s arguments and evidence that Turner’s sleeves 20, 52 are collapsible. We agree with Patent Owner and Mr. Jones that “flexibility is not the same as collapsibility,” and that Turner thus does not disclose that flexible sleeves 20, 52 necessarily are collapsible. Furthermore, Mr. Jones testifies that one of ordinary skill in the art would not find Turner’s sleeves to be collapsible and “a cylindrical polyethylene wall that is 1/16 or 5/32 of an inch [as disclosed in Turner] would actually be relatively rigid (although still capable of flexing).” Ex. 2003 ¶¶ 65–66. We find this testimony, which is based on Mr. Jones’ “experiences with polyethylene and similar materials and how they have been used in the plumbing industry,” credible and persuasive. See Ex. 2003 ¶ 66. Petitioner, on the other hand, offers no objective evidence supporting its assertion that Turner’s sleeves are collapsible.” slip op. at 28

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

    “Having considered Petitioner’s argument and evidence, we are not persuaded that Schwartz’s intermediate portion 24 is collapsible. Instead, we agree with Patent Owner that the passage of Schwartz cited by Petitioner as disclosing collapsibility (line 21 of column 2), fails to suggest that intermediate portion 24 is collapsible. Indeed, this passage merely discloses that ferrule 12 is shaped with radial flange 18. Ex. 1002, 2:21. As such, we are not directed to any disclosure in Schwartz that suggests intermediate portion 24—or any part of ferrule 12—is collapsible. Schwartz discloses that ferrule 12 is made of “chemically inert plastic material” (Ex. 1002, 2:13–14), but insufficient reasoning is given to establish that this material necessarily would be collapsible. Regarding Petitioner’s argument noted above that intermediate portion 24 “must” be collapsible, we agree with Patent Owner that this argument is not persuasive. The assertion that the intermediate portion must at least partially collapse to provide a sealing force against the soil pipe and to take up any variable space present above the pipe is not supported sufficiently by objective evidence or analysis. Furthermore, this assertion is contradicted by Mr. Jones’ testimony, which we credit. See Ex. 2003 ¶ 51.” slip op. at 14

  § 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 9,273,455
• Apple, Inc. / Microsoft Corporation et al. v. Evolved Wireless LLCRehearing denied
  PTAB · Apr 17, 2017 · IPR2016-01185 · APJ Patrick M Boucher · IPR · Rehearing

  The Board denied rehearing and left in place its denial of institution, finding the Petition insufficient to show a reasonable likelihood of prevailing on any challenge.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “Decision” or “Dec.”) denying institution of an inter partes review of U.S. Patent No. 7,809,373 B2 (Ex. 1001, “the ’373 patent”), contending that “the Decision misapprehends or overlooks the Petition’s application of the prior art to the language of independent claims 15 and 24.” Paper 8 (“Req. Reh’g”), 1. When rehearing a decision by the Board on whether to institute a trial, the Board reviews the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burden of showing that our Institution Decision should be modified lies with Petitioner, the party challenging the decision. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id.” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “As determined in the Institution Decision, the Petition’s reliance on this disclosure does not sufficiently support its contention that “[i]n order for ‘contention free’ ranging to be performed, two mobile stations cannot transmit the same ranging code at the same time,” nor its conclusion that, “[a]ccordingly, in a contention free ranging procedure, only one mobile station is allowed to send the ranging code during a particular time.” Dec. 15; Pet. 46 (citing Ex. 1003 ¶ 108; Ex. 1018 ¶¶ 98, 105, 129). As indicated expressly in the cited passage of Etemad, it is also possible for contention-free ranging to be achieved through channel reservation rather than with a dedicated preamble. “Notably, this is different from the problem addressed by the ’373 patent, which seeks to avoid collisions when two mobile terminals simultaneously attempt to use the same random access channel to effect handovers.” Dec. 16 (citing Ex. 1001, col. 4, l. 66–col. 5, l. 7).” slip op. at 6

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

    “Second, and more significant, even if Son, in isolation, disclosed a “dedicated preamble,” the Petition insufficiently articulates a compelling argument that the combined disclosures of Son and Etemad meet the specific combination of limitations recited in the challenged claims. In its argument, the Petition contends that the combination of Etemad and Son “teaches that the target base station ‘assigns . . . a ranging code’ to the mobile station for use during the handover” and that “[t]he mobile station uses this assigned ranging code to perform a ‘contention-free’ initial ranging procedure with the target base station.” Pet. 45 (citing Ex. 1005, col. 5, ll. 43–46, Fig. 2) (alterations by Petitioner). The portion of Etemad cited by the Petition to support this contention is:” slip op. at 5

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “But this contention, set forth in the Petition, is too conclusory to satisfy Petitioner’s burden. In particular, we agree with Patent Owner that “[t]his disclosure makes no reference to or explanation of a dedicated preamble, and Son provides no detail on how the code is assigned or how it is used by the terminal.” Prelim. Resp. 18. Although the Petition cites to testimony by Petitioner’s expert, Jonathan Wells, Ph.D., to support its contention, the cited portion of the expert testimony merely repeats the contention without adequate elaboration or explanation and is, therefore, similarly conclusory. Ex. 1003 ¶ 99; see 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight”). Nor is the Petition’s additional citation of portions of U.S. Pat. Publ. No. 2005/0041573 (“Eom”) sufficient to support its contention. The Petition does not adequately explain how the cited portions of Eom—which are not applied directly in any ground asserted by Petitioner—inform an understanding of Son’s disclosure to reach the conclusion Petitioner advocates.” slip op. at 4

  § 103 obviousness
  Patents in suitUS 7,809,373

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.