• One World Technologies, Inc., D/B/A Techtronic Industries Power Equipment v. Chervon (HK) LimitedInstitution denied
  PTAB · Dec 7, 2020 · PGR2020-00061 · APJ Linda E Horner · PGR · Institution

  The Board denied institution because Petitioner did not show that the ’420 patent was eligible for post-grant review.

  RulingsInstitution decision

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

    “We agree with Patent Owner that Petitioner’s evidence in support of its assertion that “[t]he earlier [CN914] application does not disclose a ‘gripping member’ and ‘handle’” is inadequate. Petitioner attempts to show that the earlier CN914 application does not disclose these claimed features by showing that the later CN040 application does disclose them. But, Petitioner’s premise that the earlier CN914 application omits these features does not necessarily or logically flow from this showing. In other words, the depiction of what appears to be a substantially cylindrical gripping member and an elongated handle in the later CN040 application does not exclude these features also from being disclosed in the earlier CN914 application. Further, as Patent Owner demonstrated by the side-by-side annotated figures from each priority application, the earlier CN914 application appears to show similar-looking features as the substantially cylindrical gripping member and the elongated handle identified by Petitioner in the figures of the later CN040 application. A relevant difference between these two annotated figures is that the features depicted in the earlier CN914 application that Patent Owner annotates as corresponding to the “elongated handle” and the “substantially cylindrical gripping portion” do not have accompanying reference numbers “13” and “23” associated with them in that figure, while these same features depicted in the later CN040 application include the same reference numbers “13” and “23” that appear in the parent ’627 patent figures. Although the lack of reference numbers in the earlier CN914 application may suggest that the written description of this earlier application does not discuss these features explicitly, drawings alone can provide “written description” support for features depicted in them. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1564 (Fed. Cir. 1991) (“[D]rawings alone may be sufficient to provide the ‘written description of the invention’ required by § 112, first paragraph.”). Petitioner has failed to address the drawings presented in the earlier CN914 application or establish sufficiently that the claim features of the parent ’627 patent are not disclosed therein. For these reasons, we find that Petitioner has not shown sufficiently” slip op. at 16

  • PTAB / AIA Trials › Real party in interest / privityNot reached

    “of the Petition. RPI Motion, 1 (seeking “to identify Techtronic Industries Co. Ltd., Techtronic Industries North America, Inc., and Homelite Consumer Products, Inc., as real parties-in-interest without admitting that they are, in fact, real parties-in-interest”). Because we deny the Petition for other reasons, we do not decide this motion. 2 The other eight petitions are IPR2020-00883, IPR2020-00884, IPR2020- 00885, IPR2020-00886, IPR2020-00887, IPR2020-00888, PGR2020-00059, and PGR2020-00060.” slip op. at 3

  • PTAB / AIA Trials › Discretionary denialNot reached

    “Patent Owner contends that we should exercise that discretion and not institute trial because of the state of the parallel district court litigation.7 Prelim. Resp. 14–16. Because we determine that Petitioner fails to show the ’420 patent is eligible for post-grant review, we need not address Patent Owner’s contentions concerning discretionary denial.” slip op. at 9

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner

    “This issue has been addressed by the Federal Circuit’s decision in Arthrex, 941 F.3d at 1337 (“This as-applied severance . . . cures the constitutional violation.”); see also Arthrex, Inc. v. Smith & Nephew, Inc., 953 F.3d 760, 764 (Fed. Cir. 2020) (Moore, J., concurring in denial of rehearing) (“Because the APJs were constitutionally appointed as of the implementation of the severance, inter partes review decisions going forward were no longer rendered by unconstitutional panels.”). Accordingly, we do not consider this issue any further for this Decision.” slip op. at 10

  Discretionary denial
  Patents in suitUS 10,524,420
• Shopify, Inc. / Priceline.Com LLC et al. v. DDR Holdings, LLCRehearing granted
  PTAB · Oct 26, 2020 · IPR2018-01014 · APJ Patrick M Boucher · IPR · Rehearing

  Granted petitioner’s rehearing request and held claims 1–3, 5, 7, 8, 11–13, 15, 17, and 18 unpatentable over the listed prior-art grounds.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “Petitioner’s argument on rehearing is persuasive, particularly under the broadest-reasonable-interpretation standard of claim construction applied in this proceeding. See Dec. 12–13 (Final Written Decision noting that, for an inter partes review proceeding based on a petition filed prior to November 13, 2018, “the Board interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear”). Petitioner clarifies that the Petition identifies Exhibit 1009’s buy page as corresponding to the “composite web page contain[ing] one or more selectable URLs” recited in the claim and identifies the “view cart,” “modify cart,” and “check out” pages linked to the “buy” page as corresponding to the recited “hierarchical set of additional pages.” See Req. Reh’g 11 (asserting “the Petition demonstrated that the ‘view cart,’ ‘modify cart,’ and ‘checkout’ links satisfy the second ‘wherein’ clause”). In doing so, Petitioner points us to specific portions of its Petition that we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 102 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 21; Ex. 1002 ¶ 102. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 102 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’825 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22. Petitioner thus demonstrates that the buy page shown in Exhibit 1009, i.e., the recited “composite web page,” contains one or more selectable URLs connecting the “view cart,” “modify cart,” and “check out” pages to the buy page, i.e., the recited “hierarchical set of additional web pages,” as required by the claim. Because each of those pages “pertain[s] to a subset of the product offerings in the electronic catalog,” such as those selected for purchase, Petitioner demonstrates, by a preponderance of the evidence, that each limitation of the second “wherein” clause of claim 3 is met by the Digital River Publications.” slip op. at 5

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed

    “the broadest-reasonable-interpretation standard of claim construction applied in this proceeding. See Dec. 12–13 (Final Written Decision noting that, for an inter partes review proceeding based on a petition filed prior to November 13, 2018, “the Board interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear”). Petitioner clarifies that the Petition identifies Exhibit 1009’s buy page as corresponding to the “composite web page contain[ing] one or more selectable URLs” recited in the claim and identifies the “view cart,” “modify cart,” and “check out” pages linked to the “buy” page as corresponding to the recited “hierarchical set of additional pages.” See Req. Reh’g 11 (asserting “the Petition demonstrated that the ‘view cart,’ ‘modify cart,’ and ‘checkout’ links satisfy the second ‘wherein’ clause”). In doing so, Petitioner points us to specific portions of its Petition that we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 102 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 21; Ex. 1002 ¶ 102. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 102 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’825 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22. Petitioner thus demonstrates that the buy page shown in Exhibit 1009, i.e., the recited “composite web page,” contains one or more selectable URLs connecting the “view cart,” “modify cart,” and “check out” pages to the buy page, i.e., the recited “hierarchical set of additional web pages,” as required by the claim. Because each of those pages “pertain[s] to a subset of the product offerings in the electronic catalog,” such as those selected for purchase, Petitioner demonstrates, by a preponderance of the evidence, that each limitation of the second “wherein” clause of claim 3 is met by the Digital River Publications.” slip op. at 5

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 102 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 21; Ex. 1002 ¶ 102. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 102 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’825 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22.” slip op. at 6

  § 103 obviousness
  Patents in suitUS 8,515,825
• Shopify, Inc. / Priceline.Com LLC et al. v. DDR Holdings, LLCRehearing granted
  PTAB · Oct 26, 2020 · IPR2018-01012 · APJ Patrick M Boucher · IPR · Rehearing

  Granted Petitioner’s rehearing request and held claims 1–3, 5, 7–8, 11–13, 15, 17, and 18 unpatentable, including claims 4, 5, 12, and 13 over the Digital River Publications.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “Petitioner’s argument on rehearing is persuasive, particularly under the broadest-reasonable-interpretation standard of claim construction applied in this proceeding. See Dec. 12–13 (Final Written Decision noting that, for an inter partes review proceeding based on a petition filed prior to November 13, 2018, “the Board interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear”). Petitioner clarifies that the Petition identifies Exhibit 1009’s buy page as corresponding to the “composite web page contain[ing] one or more selectable URLs” recited in the claim and identifies the “view cart,” “modify cart,” and “check out” pages linked to the “buy” page as corresponding to the recited “hierarchical set of additional pages.”” slip op. at 5

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 105 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 23; Ex. 1002 ¶ 105. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 105 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’228 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22. Petitioner thus demonstrates that the buy page shown in Exhibit 1009, i.e., the recited “composite web page,” contains one or more selectable URLs connecting the “view cart,” “modify cart,” and “check out” pages to the buy page, i.e., the recited “hierarchical set of additional web pages,” as required by the claim. Because each of those pages “pertain[s] to a subset of the product offerings in the electronic catalog,” such as those selected for purchase, Petitioner demonstrates, by a preponderance of the evidence, that each limitation of the second “wherein” clause of claim 4 is met by the Digital River Publications.” slip op. at 6

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 105 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 23; Ex. 1002 ¶ 105. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 105 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’228 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22.” slip op. at 6

  § 103 obviousness
  Patents in suitUS 9,043,228
• Shopify, Inc. / Priceline.Com LLC et al. v. DDR Holdings, LLCRehearing granted
  PTAB · Oct 26, 2020 · IPR2018-01011 · APJ Patrick M Boucher · IPR · Rehearing

  Petitioner’s rehearing request was granted; claims 1–3, 5, 7, 8, 11–13, 15, 17, and 18 were held unpatentable over the listed grounds.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “II. LEGAL STANDARD A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). The burden of showing a decision should be modified on a request for rehearing lies with the party challenging the decision. Id.” slip op. at 2

  • Expert testimonyPetitioner expert creditedOther

    “we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 107 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 25; Ex. 1002 ¶ 107. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 107 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’876 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22.” slip op. at 6

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Petitioner’s argument on rehearing is persuasive, particularly under the broadest-reasonable-interpretation standard of claim construction applied in this proceeding. See Dec. 12–13 (Final Written Decision noting that, for an inter partes review proceeding based on a petition filed prior to November 13, 2018, “the Board interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear”). Petitioner clarifies that the Petition identifies Exhibit 1009’s buy page as corresponding to the “composite web page contain[ing] one or more selectable URLs” recited in the claim and identifies” slip op. at 5

  § 103 obviousness
  Patents in suitUS 9,639,876
• LKQ Corporation / Keystone Automotive Industries, Inc. v. GM Global Technology Operations LLCInstitution denied
  PTAB · Oct 13, 2020 · IPR2020-00823 · APJ Scott A Daniels · IPR · Institution

  The Board denied institution because LKQ did not show a reasonable likelihood that the sole challenged claim was obvious over the Avenir Article and Lau.

  RulingsInstitution decision

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

    “determine that the circular portion, horizontal extensions and shape of the vertical tines contribute to the overall visual impression of the design claimed in the ’105 patent. In light of that, we determine that LKQ has not made a threshold showing that Avenir Article is a single reference that creates basically the same visual impression as the claimed design. High Point Design, 730 F.3d at 1312. We further determine on this record, that the circular portion and horizontal extensions as well as the shape of the vertical tines all contribute to the overall visual impression of the claimed design. In light of that, we conclude that even if a designer of ordinary skill were to have combined the Avenir Article and Lau, the result would not be prior art that accounts for the overall visual appearance of the ’105 design. See High Point Design, 730 F.3d at 1311. For the foregoing reasons, we determine that LKQ has not met its burden of demonstrating a reasonable likelihood that the challenged claim is unpatentable over the Avenir Article in combination with Lau. III. CONCLUSION LKQ has not demonstrated that that it is more likely than not that the challenged design claim of the ’105 patent is unpatentable based on the challenges presented.” slip op. at 25

  • Skill levelSkill level petitioner adoptedOther

    “B. The Designer of Ordinary Skill LKQ contends that: a designer of ordinary skill would be an individual who has at least an undergraduate degree in transportation or automotive design and work experience in the field of transportation or automotive design, or someone who has several years’ work experience in transportation or automotive design. Pet. 33 (citing Ex. 1003 ¶ 45; Ex. 1004 ¶ 44). GM argues, without citation to evidence, that: [a] designer of ordinary skill in the art relevant to the ’105 patent would have at least an undergraduate degree in automotive design, or other related industrial design field, with at least two years of relevant practical experience in designing automotive body parts. An increase in experience could compensate for less education, and an increase in education could likewise compensate for less experience. Prelim. Resp. 9. The parties do not identify, and we do not discern, any material difference between the parties’ proposed definitions. For purposes of this decision and on the record currently before us, which includes testimony by LKQ’s witnesses, we adopt LKQ’s proposed definition of the ordinary designer. Also, we point out that adopting GM’s definition would not alter the outcome of this Decision.” slip op. at 9

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

    “central circular portion and the horizontal extensions shown in the claimed design, as compared to Avenir Article, would be considered de minimis by a designer of ordinary skill in the art. For instance, Mr. Gandy testifies that “a designer of ordinary skill would have been motivated to increase the dimensions of the circular portion of the vehicle grille in order to accommodate a larger emblem in the grille.” Ex. 1003 ¶ 66. This testimony expresses a reason for enlarging the circular portion. It is not, however, persuasive evidence that the larger circle size does not have a significant impact on the overall visual impression of the claimed design. Indeed, the larger central circle and angled horizontal extensions of the claimed design are not, in our view, insignificant or minor aspects of the claim. When compared to Avenir Article, the claimed central ornamental elements work together in the context of the overall design such that the larger circle and the proximal tapered and angled ends of the horizontal extensions present a proportionally larger and dynamic emblematic element relative to the bezel and vertical tines. Although both designs are for a vehicle front grille and include a similar bezel profile and generally show vertical tines, the smaller circle and linear blade-like horizontal extensions in Avenir Article do not look like the larger and proportionally dominating central circular portion and horizontal extensions with angled and tapering proximal ends adjacent the circular portion of the claimed design. Add to this the claimed design having vertical tines with decreasing depth portions adjacent the bezel, and thus the claimed design presents a more muscular and dynamic impression than the straight blade-like horizontal extensions and smaller circular portion in Avenir Article. In light of these differences we are not persuaded that a designer of ordinary skill would have viewed Avenir Article as providing the same visual impression as the claimed design so as to be an appropriate primary reference.” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “2. The Asserted Secondary Reference – Lau Even were we to find that Avenir Article was a proper primary reference, which we do not, and that a designer of ordinary skill would have determined that Lau was so related in ornamental appearance to Avenir Article and would suggest the application of those features Avenir Article, the combination still fails to address the conspicuous discrepancies between the designs discussed above. See In re Carter, 673 F.2d 1378, 1380 (CCPA 1982) (“The designs of other references may properly be relied upon for modification of this basic design when the references are ‘“so related that the appearance of certain ornamental features in one would suggest the application of those features to the other.’”).7 LKQ acknowledges that the images in Avenir Article do not reveal the partial tines as shown in the claimed design. Pet. 52. LKQ relies on Lau mostly for its disclosure of a vehicle grille and “partial tines” along the bottom of the grille interposed between the substantially vertical tines. Id. at 52. We reproduce Petitioner’s annotated figures comparing the claimed design, Avenir Article, and Lau, below. 7 Because we determined that Avenir Article was not a sufficient primary reference, we need not make a finding here as to whether a designer of ordinary skill in the art would have combined Avenir Article and Lau. We assume, only for the sake of argument, that the combination is appropriate.” slip op. at 22

  § 103 obviousness
• Louisiana-Pacific Corporation v. Huber Engineered Woods LLCNo claims unpatentable
  PTAB · Oct 5, 2020 · IPR2019-00919 · APJ Michael L Woods · IPR · Final written decision

  Claims 1–20 were not shown unpatentable: APA does not disclose the claimed panel-joint sealant, and the proposed combinations fail to establish the required limitations or motivation to combine.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “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, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). slip op. at 32

  • Skill levelSkill level board ownOther

    “In our Decision to Institute, we determined that a POSITA “would have had a degree in civil engineering, building, material, wood science, or other degree, if such other degree required coursework or experience in the pertinent technology and two years of industry experience or equivalent therein.” Inst. Dec. 14. We further determined, “Additional education, such as an advanced degree, could offset less work experience, and additional work experience could offset less education or coursework.” Id. Patent Owner adopts the level of a POSITA set forth in our Decision to Institute. PO Resp. 13 (“HEW adopts the Board’s definition of a POSA.”). Petitioner does not address our definition in its Reply. See generally Pet. Reply. We maintain the level of a POSITA that we provided in our Decision to Institute.” slip op. at 14

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

    “1. Claim 11 Independent claim 11 recites the step of “positioning” wall panels, where each panel comprises a “barrier layer.” Ex. 1001, 22:49–63. The claim further requires the separate step of “fastening” each panel assembly to a building structure. Id. As a matter of logic, the panels cannot be fastened onto the structure until they have first been positioned. See Mformation Techs., Inc. v. Research In Motion Ltd., 764 F.3d 1392, 1398– 99 (Fed. Cir. 2014) (“[A] claim ‘requires an ordering of steps when the claim language, as a matter of logic or grammar, requires that the steps be performed in the order written, or the specification directly or implicitly requires’ an order of steps.”). Accordingly, claim 11’s step of “positioning at least two wall panel assemblies” occurs before the step of “fastening each panel assembly to the structure.” Id.; see also Ex. 1001, 3:59–61, Fig. 10 (depicting a flow diagram of the steps included in the manufacture of a panel for roof or wall sheathing). Furthermore, because the “positioning” step of the claim requires each of its panels to have “a barrier layer secured to the outer surface of each panel,” it logically follows that the panels have barrier layers before the panels are fastened to the structure. For the foregoing reason, we interpret claim 11 to require the “adjacent structural wall panels” to each have a “barrier layer secured to the outer surface of each panel” before the panels are fastened to the structure, and before the joint between the edges of the adjacent panels are sealed.” slip op. at 11

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

    “Despite the disagreement between Patent Owner and Petitioner regarding the meaning of the claimed “barrier layer secured to the outer surface of each panel,” construing this claim phrase is not necessary for purposes of this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy’” (internal citation omitted)). Rather, we determine that the only claim that requires construction is method claim 11.” slip op. at 11

  Patent outcomesUS 9,546,479 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 9,546,479
• American National Manufacturing Inc v. Sleep Number Corporation F/K/A Select Comfort CorporationRehearing denied
  PTAB · Sep 24, 2020 · IPR2019-00500 · APJ Scott A Daniels · IPR · Rehearing

  The Board denied ANM’s rehearing request, but amended the Final Written Decision to clarify that the declarants testified the products “read on” the claims.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. THE REQUEST FOR REHEARING In pertinent part, 37 C.F.R. § 42.71(d) states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. Moreover, “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).” slip op. at 2

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusOther

    “copying and nexus is consistent with ANM’s position that neither Dr. Abraham nor Dr. Edwards states an opinion as to infringement. Dr. Edwards’s testimony explains his analysis of several versions of ANM’s source code and comparison with the claims of the ’154 patent, concluding that “at least Version 1.8, Version 1.97, and Version 2.0 of ANM’s source code read on the software-related limitations of claims 1–19 of the ‘154 Patent and claims 1–18 of the ‘747 Patent.” Ex. 2029 ¶ 41. Dr. Abraham performed a physical review of various ANM air controllers, and determined “that ANM’s products sold with Gen 3 Arco and Gen 3 Koge air controllers read on the claimed mechanical related elements of (i.e. structural components of) the ‘154 and ‘747 Patents.” Ex. 2027 ¶ 29. Thus, Dr. Abraham and Dr. Edwards testimony is more accurately that ANM’s software and air controllers “read on” on the claims of the ’154 patent.” slip op. at 3

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “Substitute Claims Proposed in the Amendment 23–41 Substitute Claims: Motion to Amend Granted 23–25, 30–31, 38–41 Substitute Claims: Motion to Amend Denied 27, 28, 32–37 Substitute Claims: Not Reached 26, 29” slip op. at 6

  § 103 obviousness
  Patents in suitUS 9,737,154
• American National Manufacturing Inc v. Sleep Number Corporation F/K/A Select Comfort CorporationRehearing denied
  PTAB · Sep 24, 2020 · IPR2019-00497 · APJ Scott A Daniels · IPR · Rehearing

  Denied ANM’s rehearing request, but amended the Final Written Decision to clarify that the declarants testified that products read on the claims, not that they infringed.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. THE REQUEST FOR REHEARING In pertinent part, 37 C.F.R. § 42.71(d) states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. Moreover, “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).” slip op. at 2

  • Expert testimonyPatent owner expert creditedDecided for petitioner

    “copying and nexus is consistent with ANM’s position that neither Dr. Abraham nor Dr. Edwards states an opinion as to infringement. Dr. Edwards’s testimony explains his analysis of several versions of ANM’s source code and comparison with the claims of the ’747 patent, concluding that “at least Version 1.8, Version 1.97, and Version 2.0 of ANM’s source code read on the software-related limitations of claims 1–19 of the ‘154 Patent and claims 1–18 of the ‘747 Patent.” Ex. 2029 ¶ 41. Dr. Abraham performed a physical review of various ANM air controllers, and determined “that ANM’s products sold with Gen 3 Arco and Gen 3 Koge air controllers read on the claimed mechanical related elements of (i.e. structural components of) the ‘154 and ‘747 Patents.” Ex. 2027 ¶ 29. Thus, Dr. Abraham and Dr. Edwards testimony is more accurately that ANM’s software and air controllers “read on” on the claims of the ’747 patent.” slip op. at 3

  None
  Patents in suitUS 8,769,747
• Axonics Modulation Technologies, Inc. v. Medtronic, Inc.Institution denied
  PTAB · Sep 15, 2020 · IPR2020-00714 · APJ William V Saindon · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable under the asserted obviousness grounds.

  RulingsInstitution decision

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

    “UL 544 describes requirements a product must satisfy in order for it to be covered by Underwriters Laboratories Inc. See generally Ex. 1006, 8–9. One requirement is to pass a temperature test. Id. ¶¶ 36, 45. However, requiring a device to pass a one-off temperature test in a laboratory is not the same controlling the transfer of energy to limit temperature exposure. Petitioner has not shown that the prior art presented here teaches monitoring the temperature of an external housing or controlling energy transfer based on the temperature of the external housing. Petitioner’s contentions do not bridge the gap between a one-off test and a device that not only monitors temperature, but controls it. In sum, Petitioner has not demonstrated sufficiently a rationale to modify Torgerson’s device to include an external housing sensor, nor a teaching in the art to control the energy transfer based on the sensor reading. Petitioner’s Torgerson grounds fail for these reasons.” slip op. at 8

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

    “Patent Owner argues that UL 544 teaches a laboratory testing procedure that is not a part of the medical device during its normal operation, and thus does not lead one to a device as claimed. Prelim. Resp. 14–17. We are persuaded by Patent Owner that Petitioner fails to provide a sufficient rationale in support of the asserted combination. UL 544 describes requirements a product must satisfy in order for it to be covered by Underwriters Laboratories Inc. See generally Ex. 1006, 8–9. One requirement is to pass a temperature test. Id. ¶¶ 36, 45. However, requiring a device to pass a one-off temperature test in a laboratory is not the same controlling the transfer of energy to limit temperature exposure. Petitioner has not shown that the prior art presented here teaches monitoring the temperature of an external housing or controlling energy transfer based on the temperature of the external housing. Petitioner’s contentions do not bridge the gap between a one-off test and a device that not only monitors temperature, but controls it. In sum, Petitioner has not demonstrated sufficiently a rationale to modify Torgerson’s device to include an external housing sensor, nor a teaching in the art to control the energy transfer based on the sensor reading. Petitioner’s Torgerson grounds fail for these reasons.” slip op. at 8

  • Skill levelSkill level petitioner adoptedOther

    “Patent Owner “does not acquiesce to Petitioner’s definition,” but does not propose its own definition. Prelim. Resp. 10. Instead, it states that it “reserves the right to propose an alternative definition of a POSITA should the Board grant institution.” Id. at 11. For purposes of this Decision, we apply Petitioner’s proposed definition of the level of ordinary skill.” slip op. at 5

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “For example, Petitioner asserts that its proposed combination would “ensure patient safety” by providing temperature control of the external component. Pet. 56. But Petitioner offers no persuasive evidence that heat build-up in the external component in Barreras is of concern. Although Taylor discloses heat build-up in an external component, Taylor is not a charging device like Barreras. Instead, Petitioner seems to rely solely on the testimony of its expert for its “patient safety” premise. Id. (citing Ex. 1003 ¶ 173). Petitioner’s expert testifies, “if the external recharger were of a design that was prone to overheating, then inclusion of legs as taught in Taylor would be considered.” Ex. 1003 ¶ 173 (emphasis added). Thus, Petitioner’s expert does not provide evidence that Barreras’s external device would overheat, and instead merely assumes it without evidence or technical analysis to support the assumption. Accordingly, Petitioner’s statement that adding the temperature sensors from Taylor would “ensure patient safety” is not sufficiently based on evidence before us. Similarly, Petitioner asserts that it would have been obvious to regulate the energy transfer “in order to ensure that the temperature limits set by relevant safety standards were not exceeded . . . because [they] would have prevented pre-market approval and/or exposed marketers of the device to civil liability.” Pet. 56–57. But Petitioner offers no persuasive evidence in support of that contention. Specifically, Petitioner fails to identify evidence that there was a requirement to continuously monitor the temperature of devices (as opposed to merely passing a laboratory test, such as in UL 544 discussed above). There is no evidence that Barreras, or devices like it, generates excess heat in the external component. Petitioner’s assertions regarding pre-market approval or exposure to liability are speculative (Pet. 56–57), and not sufficiently supported by the evidence before us.” slip op. at 12

  § 103 obviousness
  Patents in suitUS 9,463,324
• Nuna Baby Essentials, Inc. / Nuna International B.V. v. Britax Child Safety, Inc.Some claims unpatentable
  PTAB · Sep 2, 2020 · IPR2019-00663 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1, 2, 12, 14–16, 18, and 19 are unpatentable as obvious over Yamazaki and Washimi; claims 3–11, 13, and 17 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Nuna Baby argues that a person of ordinary skill in the art has “a Bachelor’s Degree in Mechanical Engineering or a related subject and two or more years of experience working with child safety seats . . . [l]ess work experience may be compensated for by a higher level of education, such as a Master’s Degree, and vice versa.” Pet. 5–6 (citing Ex. 1003 ¶ 23). Britax’s definition is mostly similar, “a bachelor’s degree in mechanical engineering or other similar subjects and either a Master’s degree in mechanical engineering, or two or more years of experience in the field of child safety seats.” PO Resp. 20 (citing Ex. 2010 ¶ 28). Britax explains that “for individuals with different educational backgrounds, a person could still be of ordinary skill in the art provided that person’s additional experience compensates for any differences in that person’s education.” Id. (citing Ex. 2010 ¶ 29). We do not find a significant difference in these definitions proposed by the parties for the level of ordinary skill in the art. Both definitions allow for an undergraduate or higher professional degree and alternatively a reasonable period of time and work experience in the field of child safety seats. For purposes of this decision and on the record currently before us, we adopt Britax’s proposed definition. We emphasize that adopting Nuna Baby’s definition would not alter the outcome of this Decision.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “B. Untensioned configuration Nuna Baby proposes that the term, “untensioned configuration,” as recited in claim 1, “must be construed to mean ‘a not fully tensioned configuration.’” Pet. 6–7 (citing Ex. 1003 ¶ 29). Britax contends that this term should simply be given its plain and ordinary meaning which “is clear not only to a person of ordinary skill in the art but also to a lay person.” PO Resp. 21–2 (citing 2010 ¶ 47). This term is not reasonably in dispute, nor does any part of our Decision turn on a specific construction of this term. We find the claim language clear on its face and therefore agree with Britax that “untensioned configuration” should be given its plain and ordinary meaning—that is, not tensioned, as understood by a person of ordinary skill in the art.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed

    “lack of sufficient tension on seatbelts securing child seats in vehicles was a problem and that “[l]oose installation errors are common.” Ex. 1003 ¶ 40 (citing Ex. 1010, 14). Based on this testimony, Nuna Baby argues that one of ordinary skill in the art would have been motivated to improve Yamazaki and looked to Washimi because it teaches that tensioning both lap and shoulder belts reduces the likelihood that the lap belt will loosen. Pet. 10 ‒- 11 (citing Ex. 1012 ¶ 38; Ex. 1003 ¶ 41). Mr. Bowman explains that Washimi expressly describes the benefit of tensioning both lap and shoulder belts so “‘the webbing 60 will not follow the tilting movement of the seat main body 20, thus preventing the lap webbing 66 from becoming loose.’” Ex. 1003 ¶ 41 (quoting Ex. 1012 ¶ 38). Mr. Bowman’s testimony on these points is mostly unrebutted on this record. See, e.g., Ex. 2010 ¶ 81 (Dr. Kent asserting that “Bowman seem[s] to disregard or ignore that the tightening mechanism 11 disclosed in Yamazaki is attached to the seat base that is configured only to receive a child seat.”). We find Mr. Bowman’s testimony credible, namely that a person of ordinary skill in the art would have known that child safety seats, such as “Yamazaki’s child seat and tensioning mechanism were ready for improvement because even as late as 2009, the industry regarded tightly securing a child seat to a car to be a common source of error.” Id. ¶ 42 (citing Ex. 1010, 14, 26). In addition, Mr. Bowman points to probative evidence in Washimi explaining that securing both lap and shoulder belts provides for a more secure attachment of the child safety seat. Ex. 1003 ¶ 41 (citing Ex. 1012 ¶ 38). For the reasons articulated by Mr. Bowman, we are persuaded that one of ordinary skill in the art “[i]n view of the ‘interrelated teachings’ of Yamazaki and Washimi, the effects of the demands known to the design community, and the background knowledge possessed by a [person having ordinary skill in the art] it would have been obvious to modify Yamazaki’s system to include Washimi’s belt configuration for the tensioning mechanism.” Id. ¶ 43. On the full record now before us, we are persuaded that Nuna Baby has shown by a preponderance of the evidence that all the limitations of claim 1 are disclosed in the combination of Yamazaki and Washimi. We weigh this evidence of obviousness against Britax’s evidence of secondary considerations of non-obviousness, infra, before reaching our final determination as to patentability.” slip op. at 28

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia with nexusDecided for patent owner

    “Our comparison of the independent claims to the description of the Frontier® 90 and Frontier® CLICKTIGHT child seats in the product user guides is more consistent with Britax’s assertions. Claim 1, for example, recites a child seat and various structures such as “a seat base defining a seat portion and backrest portion.” Ex. 1001, 14:31–33. Claim 1 provides functional and structural limitations explaining how the child seat is secured by a seat belt “positioned around at least one of the front side of the backrest portion.” Id. at 14:43–44. As components of the child seat, claim 1 further recites specific limitations that pertain to the “CLICKTIGHT” features, starting with “a tensioning mechanism attached to the backrest portion of the seat base.” Id. at 14:49–50. The independent claims are mostly similar and all recite elements of a “child seat,” as a whole, including the tensioning mechanism and its features of capturing and securing both the lap and shoulder belts of a vehicle seat “to secure the child seat to the car in a tensioned configuration.” Id. at 14:59–60. Thus, the claims do not recite simply a component of a child seat but mostly the product as a whole, and so we do not find Nuna Baby’s argument that the claims mainly recite a component of the child seat products persuasive. Reply 21–22 (citing Fox Factory, 944 F.3d at 1373). In addition, it is a reasonably simple comparison to read the claims in conjunction with the user guides for the Frontier® 90 and Frontier® CLICKTIGHT child seats to which Britax refers. For example, a comparison of page 10 of the Frontier 90 user guide describing installation of the child seat, including the “CLICKTIGHT” feature for securing both lap and shoulder belts, tracks right along with the child seat and tensioning mechanism as recited in claim 1.11 We acknowledge that neither Britax nor Dr. Kent have undertaken an exemplary comparison of the claims and products as Nuna Baby argues. See Reply 21 (Nuna Baby arguing that “[n]either PO nor its expert address the numerous limitations of any of the independent claims in narrative or claim chart form”). However, the claims are reasonably straightforward and descriptive and the product user guides are quite clear as to the relevant corresponding structure and function of the commercial products. We determine that Britax has shown sufficiently in this proceeding that the Frontier® 90 and Frontier® CLICKTIGHT child seats are sufficiently coextensive with the claims to be entitled to a presumption of nexus. To the extent we determine that Britax has met their burden to show sufficiently a presumption of nexus, as discussed below, this is in some ways inconsequential because, as explained below, we do not determine that the weak evidence of praise and long-felt need outweighs the substantial evidence of non-obviousness, including Yamazaki and Washimi.” slip op. at 58

  Patent outcomesUS 9,187,016 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,187,016

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.