- PTAB · Mar 2, 2023 · IPR2021-01483 · APJ Michael T Cygan · IPR · Final written decision
Claims 1–18 are unpatentable; the revised motion to amend and both parties’ motions to exclude are denied.
RulingsFinal written decision- Skill levelOther
“B. Level of Skill in the Art Petitioner offers an assessment as to the level of skill in the art as of” slip op. at 10
- 112 supportMotion to amend, deniedDenied
“to . . . introduce new subject matter.” 35 U.S.C. § 316(d)(3); 37 C.F.R. § 41.121(a)(2)(ii); Lectrosonics, Paper 15 at 6–7. Accordingly, “the Board requires that a motion to amend set forth written description support in the originally filed disclosure of the subject patent for each proposed substitute claim, and also set forth support in an earlier filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.” Lectrosonics, Paper 15 at 7 (citing 37 C.F.R. § 42.121(b)(1)–(2)). For this requirement, Patent Owner must cite “to the original disclosure of the application, as filed, rather than to the patent as issued.” Id. at 8.” slip op. at 56
- ExcludeMotion to exclude, deniedDenied
“insufficiency in its showing that these documents are prior art is a legal determination to be made by the Board, and is not proper for a motion to exclude. Pet. Opp. PO Mot. Excl. 4 (citing Chicago Mercantile Exchange Inc. v. 5th Market, Inc., CBM2014-00114, Paper 35, at 52 (P.T.A.B. Aug. 18, 2015) (“a motion to exclude is not the proper vehicle to challenge the sufficiency of the evidence used to demonstrate that [an item] qualifies as a prior art printed publication . . .. Whether a reference qualifies as a printed publication . . . is a legal conclusion based on underlying factual determinations” and thus “the issue of whether there is sufficient evidence in the record . . . should be presented in the patent owner response—not a motion to exclude”).” slip op. at 64
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“claims 11, 17, and 18. Resp. 10 n. 2. We determine that Petitioner has shown the limitations of claims 11, 17, and 18 to be taught by the abovementioned portions of Chang and Geeks, and that a person of ordinary skill in the art would have reason to combine the references with a reasonable expectation of success. For these reasons, we determine that Petitioner has shown, by a preponderance of the evidence, that claims 11, 17, and 18 are unpatentable.” slip op. at 18
§ 103 obviousnesscites Phillips · KSR · Graham · NautilusPatents in suitUS 9,848,295
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.