• Oticon Medical AB / Oticon Medical LLC et al. v. Cochlear LimitedNo claims unpatentable
  PTAB · Oct 14, 2020 · IPR2019-00975 · APJ James A Worth · IPR · Final written decision

  Claims 1–12, 14, 16, 17, 25, 28, 33–35, 37–41, and 45–47 were not shown unpatentable because Petitioner failed to establish a rationale to combine Westerkull ’794 and Choi.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “At the oral hearing, Petitioner acknowledged that the differences between the parties’ assertions regarding the level of skill in the art would not be dispositive. Tr. 25:12–26:11. In view of the lack of material dispute on this issue, we adopt Patent Owner’s asserted level of skill, which we find to be supported by the testimony of Dr. Rentschler. See Ex. 2037 ¶¶ 54–55; see also Tr. 26:10–11 (Counsel for Petitioner: “We agree that the issues really here are highly mechanical.”).” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “We now turn to the issue of whether the preamble of claim 1 is limiting. Petitioner argues that the preamble recites an intended use because the body of claim 1 recites the structural limitations but the preamble does not. Pet. Supp. Br. 3. Petitioner also argues that the preamble recites an intended use because, in another case between the same parties involving a different claim relating to the same subject matter, the court concluded that the preamble recited an intended use. Id. at 3 (citing Cochlear Bone Anchored Sols. AB v. Oticon Med. AB, 958 F.3d 1348, 1355 (Fed. Cir. 2020)). Patent Owner argues that the preamble is limiting because the phrase “the bone” has its antecedent basis in the phrase “a skull bone” in the preamble. PO Supp. Br. 3 (citing Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008)). We determine, as a matter of reading the words of the claim, that the antecedent basis for “the bone” is “a skull bone” in the preamble of claim 1. See Ex. 1001, 5:56–57. Accordingly, we determine that the preamble is limiting. See Energizer Holdings, Inc. v. Int’l Trade Comm’n, 436 F.3d 1366 (Fed. Cir. 2006) (“anode gel” was understood to be the antecedent basis for “said zinc anode”).9 In other words, it is a requirement that the prosthesis is structured so that it is appropriate for being anchored into the skull bone. See Catalina 9 Patent Owner also argues that the cases relied on in the Petition to argue that the preamble is not limiting stand for the opposite proposition because, in those cases, the preambles were limiting because they introduced or defined terms later used in the claims. PO Supp. Br. 4 n.1 (citing Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305–06 (Fed. Cir. 1999); Rowe v. Dror, 112 F.3d 473, 478-79 (Fed. Cir. 1997)). We agree with Patent Owner that the statement of law in the Petition, i.e., that a preamble may recite an intended use when the body of the claim recites all structural elements (see Pet. 19), is not dispositive of this case because the body of the claim refers back to the preamble. Marketing International, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (“dependence on a particular disputed preamble phrase for antecedent basis may limit claim scope because it indicates a reliance on both the preamble and claim body to define the claimed invention.”). 2. the preamble: “bone fixture configured to anchor to bone” (claim 8) For similar reasons as for the preamble of claim 1, we determine that the preamble of claim 8 is limiting, i.e., because it provides antecedent basis for “the bone” in the body of the claim. However, the preamble of claim 8 only refers to “bone” and not to “a skull bone” and therefore does not itself impose a limitation of a “skull bone.” Compare Ex. 1001, 6:22, with id. at 5:56–57.” slip op. at 12

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

    “means “a channel, distinct from the screw thread and distinct from the flange, extending around the cylindrical portion of the main body of the anchor, having an inner diameter and an outer diameter.” Pet. 20. Petitioner also asserts that a person of ordinary skill would understand that a circumferential groove is provided to “exert a compressive radial force on the skull bone to improve stability of the anchoring fixture.” Id. (citing Ex. 1013, 3; Ex. 1002 ¶ 36). The District Court construed “circumferential groove” to mean “a narrow channel extending around the cylindrical periphery of the main body of the implant.” Ex. 3001, 33.10” slip op. at 13

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

    “In response to our question inviting further briefing, Petitioner submits that “periphery” refers to the widest portion of the fixture inserted into the skull and distinct from the flange. See Pet. Reply 2. Patent Owner does not comment on the question. See PO Resp. 15–17. For purposes of this Decision, we determine that it is not necessary to further construe the term “periphery.” See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claims are construed only to the extent necessary to resolve a dispute). 4. “wherein the anchoring fixture is configured for anchoring a hearing” slip op. at 14

  Patent outcomesUS 9,838,807 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,838,807
• 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
• 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
• Louisiana-Pacific Corporation v. Huber Engineered Woods LLCInstitution denied
  PTAB · Aug 20, 2020 · IPR2020-00605 · APJ Michael L Woods · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1–20 were unpatentable under any of its three obviousness grounds.

  RulingsInstitution decision

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

    “B. Principles of Law “In an . . . [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). This burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Petitioner’s challenges are based on obviousness. Pet. 17. A claim is unpatentable as obvious under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) where in evidence, so-called secondary considerations. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966).” slip op. at 12

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

    “the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential) (“Hulu”).5 5 The Decision to Institute in IPR2019-00919, in which many of the references cited in the present case also were at issue, was entered before the Board’s precedential decision in Hulu. Compare IPR2019-00919, Paper 9 (dated Oct. 8, 2019), with Hulu, Paper 29 (dated Dec. 20, 2019). Here, we assess the sufficiency of Petitioner’s evidence as to whether APA, StoGuard- 2001, and StoGuard-2003 qualify as printed publications in view of the guidance provided in Hulu. We note that the Petition was filed on February 19, 2020, such that Petitioner also had the benefit of the guidance provided in Hulu when filing its Petition.” slip op. at 14

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

    “Petitioner submits that the ordinary and customary meaning applies to the claimed terms and does not propose construction of any particular claim term. See Pet. 24. Patent Owner, on the other hand, proposes that the term “the first/second structural/OSB panel comprises a bulk water resistant and water vapor permeable barrier” requires construction. Prelim. Resp. 14. For purposes of this decision, we discern no need to construe any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe 4 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11

  • Skill levelSkill level board ownDecided for patent owner

    “The parties propose to adopt the same definition that we applied in co-pending IPR2019-00919. See Pet. 24; see also Prelim. Resp. 13. Based on our review of the ’140 patent, the types of problems and solutions described in the ’140 patent and applied prior art, for purposes of this decision, we agree with the parties and determine that a person having ordinary skill in the art would have had degree in civil engineering or building, material or 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. See IPR2019-00919, Paper 9, 14.” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,702,140
• Louisiana-Pacific Corporation v. Huber Engineered Woods LLCInstitution denied
  PTAB · Aug 20, 2020 · IPR2020-00604 · APJ Michael L Woods · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that any of claims 1–20 was unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

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

    “III. CONCLUSION After considering the evidence and arguments presented in the Petition and Preliminary Response, we determine that the record does not demonstrate a reasonable likelihood that Petitioner will prevail with respect to any claim challenged in the Petition. We, therefore, do not institute inter partes review of the ’159 patent. IV. ORDER In consideration of the foregoing, it is hereby ORDERED that, no inter partes review is instituted.” slip op. at 38

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “1 Because we deny institution upon consideration of the merits of Petitioner’s challenges (see infra Part II), Patent Owner’s argument that we should exercise our discretion under 35 U.S.C. § 314(a) to deny institution under the factors set forth in the recent precedential Order in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (see Prelim. Resp. 17–18) is moot and we do not address it in this Decision.” slip op. at 2

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

    “For purposes of this decision, we discern no need to construe any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11

  • Skill levelSkill level board ownDecided for petitioner

    “The parties propose to adopt the same definition that we applied in co-pending IPR2019-00919. See Pet. 24–25; see also Prelim. Resp. 13. Based on our review of the ’159 patent, the types of problems and solutions described in the ’159 patent and applied prior art, for purposes of this decision, we agree with the parties and determine that a person having ordinary skill in the art would have had degree in civil engineering or building, material or 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. See IPR2019-00919, Paper 9, 14.” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,689,159
• Louisiana-Pacific Corporation v. Huber Engineered Woods LLCInstitution denied
  PTAB · Aug 20, 2020 · IPR2020-00596 · APJ Michael L Woods · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1–20 were unpatentable over any of its three obviousness grounds.

  RulingsInstitution decision

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

    “B. Principles of Law “In an . . . [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). This burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Petitioner’s challenges are based on obviousness. Pet. 17. A claim is unpatentable as obvious under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) where in evidence, so-called” slip op. at 12

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner

    “As the Board held in a precedential decision, “at the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential) (“Hulu”).5” slip op. at 14

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

    “As discussed above, however, we do not consider StoGuard’s waterproof coating or joint filler in our analysis. See supra Part II.E.9.b. Without the benefit of StoGuard-2001 or StoGuard-2003, we are not persuaded that a skilled artisan would have replaced APA’s housewrap with Peng’s caulk or tape to improve water resistance. APA’s housewrap covers both the panels and the joints. See, e.g., Ex. 1005, Fig. 12.27. Assuming arguendo that Peng teaches a joint sealant, as Petitioner asserts (Pet. 32), we are not persuaded that a skilled artisan would have replaced APA’s housewrap with Peng’s joint sealant to improve water resistance, as removal of APA’s housewrap would leave APA’s panels exposed to water intrusion. In other words, even if Peng’s joint sealant seals the joints between adjacent panels, the sealant would not seal the panels themselves, and removing APA’s housewrap would leave the panels exposed to water intrusion. Based on the record before us, Petitioner has not established that APA in view of Peng satisfies the claimed sealant for sealing the joint between the proximate edges of two adjacent panels.” slip op. at 27

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

    “4. Analysis Each of independent claims 1, 12, and 20 recites, “lignocellulosic panels.” Ex. 1001, 21:51, 22:29, 23:8. Petitioner submits that “Forbes discloses a lignocellulosic structural wall panel,” citing page 1 of Forbes. Pet. 60. Page 1 of Forbes indeed discloses that prior art systems disclose plywood or OSB panels, yet these wood or OSB panels are not the “panels” that Petitioner points to in satisfying the claim limitations. Rather, and as explained above, Petitioner relies on Forbes’s insulation material 52 to satisfy the claimed adjacent panels, yet Forbes’s “panels” are made of insulation material, typically expanded polystyrene. See Ex. 1038, 9:7–15. Petitioner does not point to anything in Forbes that discloses that “panels” 52 are made from wood or other lignocellulosic material. Nor does Petitioner contend this would have been obvious. See Pet. 63–64. As such, we agree with Patent Owner that Petitioner’s challenge is deficient in at least this respect. We also agree with Patent Owner that this challenge fails to satisfy the claimed sealant or sealing the joint between two adjacent panels, as called for in the claims. See Ex. 1001, 21:61–62 (claim 1), 22:22 (claim 12), 23:23–24 (claim 20). Petitioner cites to Forbes for disclosing a sealant for the joint between adjacent panels (Pet. 61), yet we find no such disclosure. The “sealant” that Petitioner appears to refer to is instead an adhesive for affixing second layer 54 to first layer 52. Ex. 1038, 11:12–13 (“A suitable adhesive is PVA Dispersion Glue for Assembly . . . .”). Petitioner also reasons, in the alternative, that a skilled artisan would have used “the Flack membrane as a form of or substitute for the ‘second layer’ of Forbes, with the joint tape of Van Wagoner, motivated to improve resistance to water infiltration with a cost-effective and functionally effective alternative to housewraps.” Pet. 63. This reasoning, however, falls short for at least two reasons. First, Petitioner proposes that the combination is an “alternative to housewraps,” yet Petitioner’s challenge does not propose to use a housewrap, as Forbes’s “barrier layer” 54 is not a housewrap. Second, and as discussed above, the Petition fails to cite to any evidence, such as testimony or citations to the record, to support a finding that the combination would either improve water resistance or reduce costs. See supra Part II.E.9.d. Petitioner does not explain how Forbes’s water-resistive barrier and sealants are deficient at resisting water or how substituting Flack’s membrane or Van Wagoner’s seam tape would have improved Forbes’s water resistance or reduce costs such that one of ordinary skill in the art would have been motivated to make this substitution. See 37 C.F.R. § 42.104(b)(5). Although Petitioner also relies on Peng and Elliott in challenging independent claim 1 under Ground 2 (see Pet. 19), Petitioner cites to nothing in either of these references that overcomes the deficiencies discussed above (see id. at 60–64). 5. Summary For the foregoing reasons, Petitioner has not established a reasonable likelihood of prevailing on its contention that Forbes in view of Flack or Van Wagoner renders claim 1, 12, or 20 unpatentable. Further, Petitioner does not contend that the other secondary references relied upon in challenging the dependent claims remedy these deficiencies. See Pet. 63–68. Accordingly, Petitioner has not established a reasonable likelihood of prevailing on its contentions based on Forbes that any of claims 1–20 are unpatentable.” slip op. at 32

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,474,197
• LKQ Corporation / Keystone Automotive Industries, Inc. v. GM Global Technology Operations LLCInstitution denied
  PTAB · 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

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.