- PTAB · Oct 30, 2020 · IPR2020-00909 · APJ Frances L Ippolito · IPR · Institution
The Board denied institution because claims 15–17 were statutorily disclaimed, and denied Garmin’s motion to join IPR2020-00782.
RulingsInstitution decision- Adverse judgmentAdverse judgmentOther
“Pursuant to 37 C.F.R. § 42.107(e), “[t]he patent owner may file a statutory disclaimer under 35 U.S.C. [§] 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.” A disclaimer under 35 U.S.C. § 253(a) shall be recorded in the Office, and is “considered as part of the original patent.” See 35 U.S.C. § 253(a).” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“As discussed above, because Patent Owner filed a statutory disclaimer in compliance with 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a) disclaiming all the challenged claims of the ’958 patent, no inter partes review is instituted in this proceeding. Moreover, for the same reason, the Board has denied institution in IPR2020-00782. Accordingly, there is no ongoing inter partes review in IPR2020-00782 to which the instant Petitioner could be joined. Therefore, pursuant to § 315(c), we deny the Motion for Joinder.” slip op. at 6
NonePatents in suitUS 6,976,958 - Fitbit, Inc. v. Philips North America LLCInstitution deniedPTAB · Oct 30, 2020 · IPR2020-00782 · APJ Frances L Ippolito · IPR · Institution
The Board denied institution because Philips had recorded a statutory disclaimer of all challenged claims 15–17.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“Pursuant to 37 C.F.R. § 42.107(e), “[t]he patent owner may file a statutory disclaimer under 35 U.S.C. [§] 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.” (Emphasis added.) A disclaimer under 35 U.S.C. § 253(a) shall be recorded in the Office, and is “considered as part of the original patent.” See 35 U.S.C. § 253(a).” slip op. at 5
Discretionary denialPatents in suitUS 6,976,958 - LKQ Corporation / Keystone Automotive Industries, Inc. v. GM Global Technology Operations LLCInstitution deniedPTAB · 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 unpatentablePTAB · 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 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 9,546,479 - Lutron Electronics Co., Inc. v. Geigtech East Bay LLCRehearing deniedPTAB · Oct 1, 2020 · PGR2020-00012 · APJ Frances L Ippolito · PGR · Rehearing
The Board denied Lutron’s rehearing request and maintained denial of institution because Colson did not show the claimed passage through the bracket.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“party challenging the decision,” and the challenging party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d) (2019). Because Petitioner seeks rehearing of our Decision denying the Petition, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. 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).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“limitations regarding a “passage” and “opening,” our discussion focuses on claim 1, but our analysis applies equally to all of the challenged claims. Claim 1 is directed to a bracket configured to be coupled to a support surface and configured to support a roller window shade assembly. Ex. 1001, 10:20–23. The recited bracket includes “a side configured to bear against the support surface such that the bracket extends away from the support surface and is adjacent an end of the roller window shade assembly.” Id. at 10:24–27. Claim 1 also requires “a passage extending through the bracket from the side to an area of the bracket adjacent the roller window shade assembly[.]”” slip op. at 6
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Pet. 44. However, we observe that Colson makes no mention of a passage that wires 130 must pass through. Instead, Colson teaches that there are “openings” in the bracket and frame. Id. ¶ 31. And, Colson explicitly states that the openings are not shown in Figure 1. Thus, Colson, at most, teaches that wires pass through the bracket and frame, but does not specify where the openings are in Figure 1 or, otherwise, define the path of the passage. This is important because claim 1 requires a specific passage that extends “through the bracket from the side to an area of the bracket adjacent the roller window shade assembly.” Petitioner would have us assume that Colson’s two-dimensional Figure 1 read with paragraph 31 must disclose wires passing through a specific path through the bracket, as recited in the claims. However, we decline to make Petitioner’s proposed assumption because it is not supported by Colson or other evidence.” slip op. at 7
NonePatents in suitUS 10,294,717 - American National Manufacturing Inc v. Sleep Number Corporation F/K/A Select Comfort CorporationRehearing deniedPTAB · 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 obviousnessPatents in suitUS 9,737,154 - American National Manufacturing Inc v. Sleep Number Corporation F/K/A Select Comfort CorporationRehearing deniedPTAB · 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
NonePatents in suitUS 8,769,747 - Nuna Baby Essentials, Inc. / Nuna International B.V. v. Britax Child Safety, Inc.Some claims unpatentablePTAB · 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 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,187,016 - LKQ Corporation / Keystone Automotive Industries, Inc. v. GM Global Technology Operations LLCInstitution deniedPTAB · Aug 10, 2020 · PGR2020-00020 · APJ Christopher G Paulraj · PGR · Institution
The Board denied institution because Petitioner did not show that the sole design claim was more likely than not unpatentable under the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“A post-grant review may be instituted only if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine, for the reasons set forth below, that Petitioner has failed to demonstrate that it is more likely than not that the challenged claim is unpatentable based on the grounds presented. Therefore, we do not institute a post-grant review of that claim.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. The Designer of Ordinary Skill Petitioner 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 design, or someone who has several years’ work experience in the field of transportation or automotive design. Pet. 31 (citing Ex. 1003 ¶¶ 37–42; Ex. 1004 ¶¶ 35–42). Patent Owner argues, without citation to evidence, that: [a] designer of ordinary skill in the art relevant to the ’099 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. 10. 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 Petitioner’s declarants, we adopt Petitioner’s proposed definition of the ordinary designer. Also, we point out that adopting Patent Owner’s definition would not alter the outcome of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“November 13, 2018, we apply the same claim construction standard used in district courts. See 37 C.F.R. § 42.200(b) (2019). Generally in the context of a design patent, an illustration, rather than a verbal description, is the better representation of the claimed design. “As the Supreme Court has recognized, a design is better represented by an illustration ‘than it could be by any description and a description would probably not be intelligible without the illustration.’” Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) (quoting Dobson v. Dornan, 118 U.S. 10, 14, (1886)). Although preferably a design patent claim is not construed by providing a detailed verbal description, it may be “helpful to point out . . . various features of the claimed design as they relate to the . . . prior art.” Id. at 679–80; cf. High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301, 1314–15 (Fed. Cir. 2013) (remanding to the district court, in part, for a “verbal description of the claimed design to evoke a visual image consonant with that design”). Here, the overall visual appearance of the vehicle grille bezel design shown in Figures 1–5 of the ’099 design is clearly exemplified in the drawings. In other words, the elements and features of the ’099 design which contribute to the overall appearance of the design are readily discernable and apparent to any observer. We determine that the best description of the ornamental features of the ’099 design comes from the drawings themselves. Accordingly, we determine that no articulated verbal description is necessary to describe the overall ornamental nature of the ’099 design. Nonetheless, we have taken into account Petitioner’s verbal description of the design in our analysis, but agree with Patent Owner’s contention that Petitioner’s verbal description is an incomplete description of the actual design. Although we do not undertake a specific verbal construction, we acknowledge in our following analyses the relevant design characteristics of the ’099 design, including key similarities and distinctions in comparison to the prior art. See MRC Innovations, Inc. v. Hunter Mfg., LLP, 747 F.3d 1326, 1332 (Fed. Cir. 2014) (Affirming that a verbal claim construction was unnecessary, the Federal Circuit explained that “the district court did not err by failing to provide an express verbal description of the claimed design; rather, it described the claimed design in the context of comparing it to the prior art.”).” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“particular, we agree with Patent Owner that Petitioner’s analysis is deficient insofar as it fails to sufficiently consider the claimed design from the side perspective as shown in Figure 3 of the ’099 patent. The only photograph that Petitioner relies upon to show how the grille bezel of the 2014 Buick Enclave allegedly meets the claimed design from the side does not adequately show the features depicted in Figure 3. Petitioner provides a side-by-side comparison of Figure 3 of the ’099 Patent with the 2014 Buick Enclave, as reproduced below. The image above is offered by Petitioner to compare Figure 3 of Exhibit 1001 to page 1 of Exhibit 1007 to allegedly show that “the bezel is horizontally convexly curved, and the bottom of the u-shaped portion is forward of the substantially horizontal portion.” Pet. 44–45 (color in original). However, that photograph shows more of the front than the side of the grille bezel. It is not clear from the comparison photograph provided whether “the bottom of the u-shaped portion is forward of the substantially horizontal portion,” as required by Petitioner’s own textual claim construction. It is also not clear from the photograph that the “short, downward-pointing diagonal bezel segment at each end” as described in Petitioner’s textual construction extends backward from the “horizontal top portion” to meet the top end of the “substantially u-shaped bottom portion.” Petitioner does not explain why the ordinary observer would not have considered these features from the side perspective in determining the overall visual impression created by the claimed design. We agree with Patent Owner that Petitioner impermissibly ignores the full three-dimensionality of the claimed design.” slip op. at 19
Claim construction§ 103 obviousness - Intex Recreation Corp. v. Bestway (USA), Inc.All claims unpatentablePTAB · Jun 22, 2020 · IPR2019-00454 · APJ Barry L Grossman · IPR · Final written decision
Claims 1–4 are unpatentable under §103 based on Yuan and Metzger, and independently based on Yuan and Reed; contingent Grounds 2, 3, 4, and 6 are moot.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Neither party presents a detailed evidentiary showing of factors typically considered in determining the level of ordinary skill. Petitioner asserts that a person of ordinary skill “would have had either: (1) a bachelor’s degree in mechanical engineering, or an equivalent field; or (2) an associate’s degree in mechanical engineering, or an equivalent field, and two years of practical experience in inflatable product design.” Pet. 11 (citing Ex. 1002 ¶ 27). The cited paragraph from Mr. Kuchel’s Declaration merely repeats Petitioner’s conclusion. Neither Petitioner nor Mr. Kuchel provide any analysis of the factors typically considered in determining the level of ordinary skill. Mr. Kuchel’s conclusory opinion on this issue is entitled to some, but little, probative weight. 37 C.F.R. § 42.65(a).” slip op. at 13
- Expert testimonyPatent owner expert discountedDecided for petitioner
“We have considered the testimony of Dr. Abraham and give it no probative weight on the issue of claim construction. There is no support in the claims, written description of the Specification, or prosecution history to support Dr. Abraham’s testimony concerning “inhibited air flow” or a temporary pressure differential between chambers when the claimed air-bed is both inflated and being used. A court should discount any expert testimony “that is clearly at odds with the claim construction mandated by the claims themselves, the written description, and the prosecution history, in other words, with the written record of the patent.” Phillips, 415 F.3d at 1318; see also SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1195 (Fed. Cir. 2013) (stating that expert testimony, in particular, is less litigation and thus can suffer from bias that is not present in intrinsic evidence”) (citing Phillips, 415 F.3d at 1318). We find that Dr. Abraham’s testimony is clearly at odds with the intrinsic evidence as discussed above.” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“e) Conclusion Regarding the Term Air-Chamber Ultimately, the interpretation to be given a term can only be determined and confirmed with a full understanding of what the inventors actually invented and intended to envelop with the claim. The construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention will be, in the end, the correct construction. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998) (cited with approval in Phillips, 415 F.3d at 1316). We conclude that a person of ordinary skill, with the level of education and experience stated in Section II.B.1 of this Decision, would understand from the claims and Specification that the term an air-chamber, as used in the claims of the ’866 patent, means an area of an air-bed that can be filled with, and can retain, air. Based on the evidence discussed above, this is the construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention.” slip op. at 22
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“In claim 1, the claim language itself defines specifically what it means by the recited “concave” relationship with the words following the phrase “that is” (see Ex. 3003, 2, 3).12 The claim itself thus defines the “concave” relationship to mean “the outer surface of the peripheral auxiliary air-chamber [B1] extends beyond the bottom sheet [3] of lower main air-chamber [B2].” Ex. 1001, 4:29–31 (emphasis and reference numerals added).” slip op. at 31
Patent outcomesUS 7,269,866 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,269,866
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.