• Mastercraft Boat Company, LLC v. Malibu Boats, LLCInstitution denied
  PTAB · Nov 16, 2016 · IPR2016-01058 · APJ Josiah C Cocks · IPR · Institution

  The Board denied institution because MasterCraft did not show a reasonable likelihood of success on any challenge to claims 27–29.

  RulingsInstitution decision

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

    “An inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we conclude that the information presented in the Petition does not establish a reasonable likelihood of success with respect to claims 27–29 of the ’873 patent. We do not institute an inter partes review.” slip op. at 2

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

    “wake surfing” appears in the preamble of claim 27, the body of the claim includes recitation of particular structures, i.e. “first and second upright wake modifiers” that operate to form left side and right side “asymmetrical wakes.” We determine that the preamble of claim 27 provides informative context for the type of asymmetrical wakes that are generated by the upright wake modifiers. In that respect, the produced asymmetrical wakes must be understood as suitable for surfing. Indeed, that determination is also consistent with other language of claim 27. In particular, the body of claim 27 further recites that each of the asymmetrical wakes generated are “different from a non-surf wake.” It follows logically that if asymmetrical wakes must be different from non-surf wakes, then the asymmetrical wakes are understood as surf wakes, or wakes suitable for surfing. Accordingly, we conclude that the asymmetrical wakes produced by the upright wake modifiers in claim 27 must be those recognizable as suitable for surfing. We turn now to the meaning of “wakes suitable for surfing”” slip op. at 8

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

    “suitable for surfing.” For the following reasons, we agree with the meaning that is offered by Malibu. At the outset, we do observe that the ’873 patent describes that “[o]ne aspect of the present invention is directed to a surf wake system for modifying a wake formed by a watercraft travelling through water.” Ex. 1001, 2:11–13. We, however, do not share MasterCraft’s view that such description establishes the meaning of the type of “wakes” described in claim 27. We agree with Malibu that an asymmetrical wake of claim 27 that is “different from a non-surf wake” and which is characterized as being “suitable for surfing” is a wake that must be suitable for surfing. MasterCraft’s proposal that simply any wake that has been “modified” amounts to a “wake suitable for surfing” is not correct, in our view, as that meaning would encompass wakes that, although modified, are not suitable for surfing.” slip op. at 9

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Not reached

    “plus-function limitation subject to 35 U.S.C. § 112, ¶6 (pre-AIA), because it fails to ‘recite sufficiently definite structure’ and recites ‘function without reciting sufficient structure for performing that function.’” Pet. 5 (citations omitted). To that end, MasterCraft contends that the allegedly corresponding structure disclosed in the Specification are variants of types of “water diverters” or “flaps.” Id. at 8. Malibu disagrees that the noted phrase invokes § 112, ¶ 6, contending instead that the noted phrase describes structural details of a wake modifier. PO Resp. 26–27. For purposes of this Decision, we determine that it is not necessary to ascertain whether the pertinent phrase is a means-plus-function limitation. In particular, we determine that it is only necessary to consider that the noted phrase requires that the wake modifiers are components that are structured and configured to create asymmetrical wakes that are suitable for surfing.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,578,873
• Mastercraft Boat Company, LLC v. Malibu Boats, LLCInstitution denied
  PTAB · Nov 16, 2016 · IPR2016-01057 · APJ Josiah C Cocks · IPR · Institution

  The Board denied institution because MasterCraft did not show a reasonable likelihood that claims 1, 2, 6, 7, 17–20, 22, and 23 were unpatentable on any asserted ground.

  RulingsInstitution decision

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

    “An inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we conclude that the information presented in the Petition does not establish a reasonable likelihood of success with respect to claims 1, 2, 6, 7, 17–20, 22, and 23 of the ’873 patent. We do not institute an inter partes review.” slip op. at 2

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

    “At the outset, we observe that the ’873 patent describes that “[o]ne aspect of the present invention is directed to a surf wake system for modifying a wake formed by a watercraft travelling through water.” Ex. 1001, 2:11–13. We, however, do not share MasterCraft’s view that such description establishes the meaning of “surf wake.” We agree with Malibu that, at its core, a surf wake must be a wake that is suitable for surfing. MasterCraft’s proposal that simply any wake that has been “modified” amounts to a “surf wake” is not correct as that meaning would encompass wakes that, although modified, are not suitable for surfing.” slip op. at 9

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

    “2. Anticipation by Svensson Anticipation is established only when a single prior art reference discloses all elements of the claimed invention. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). Here, MasterCraft contends that all of the features of” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not found

    “In light of that testimony, we understand that Dr. Savander’s computer modeling is based on specific assumptions as to sizing and positioning of flaps when placed on a vessel hull so as to allegedly produce a surf wake. Dr. Savander provides no persuasive reasoning as to why those assumptions are derived appropriately from the teachings of the prior art. Indeed, while noting that Svensson, itself, provides “no geometric guidance as to the height and width of the flaps,” as noted above, Dr. Savander proceeds to “estimate[]” without adequate reasoning that a flap height of “approximately 50% of the hull side height, or 18.2 inches” would be used “in order for the flap to start at the lower chine and extend above the water surface.” Id. Dr. Savander also theorizes that flap width would “fall into the range of 2, 3, and 4 inches.” Id. It simply does not follow on the record before us that the particular flap dimensions and positioning would have been derived from the teachings of the prior art. Yet, those parameters are crucial to MasterCraft’s position that claims of the ’873 patent would have been obvious based on Svensson. We are not satisfied that those obviousness challenges are guided by the teachings of the prior art rather than formulated, in-part, from hindsight with the intention of creating the upright water diverters disclosed in the ’873 patent. We also find lacking in the Petition suitable articulated reasoning as to why a skilled artisan would have adequate reason to combine the teachings of the prior art. In particular, MasterCraft simply concludes that Svensson’s teachings have “broad applicability” and on that basis a person of ordinary skill in the art generally would have been motivated to apply those teachings to any given boat hull, such as that disclosed in Clement. Pet. 31. That is not, in our view, sufficiently articulated reasoning with rational evidentiary underpinnings that is necessary to demonstrate an adequate reason to combine prior art teachings. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).” slip op. at 15

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,578,873
• Praxair Distribution, Inc. v. Ino Therapeutics, LLCNo claims unpatentable
  PTAB · Sep 15, 2016 · IPR2015-00891 · APJ Scott A Daniels · IPR · Final written decision

  Praxair failed to prove claims 1–16 unpatentable under the three §103 grounds because it did not establish a sufficient reason to combine the prior art.

  RulingsFinal written decision

  • BurdenFwd all claims patentableNot shown unpatentable

    “sensed in-line gas concentration being used to perform verification of gas supply and gas delivery to a subject or patient into a device receiving gas concentration information from Peters’s handle and memory on the gas supply cylinder in order to verify and control gas delivery to a patient smacks of hindsight reasoning. After considering the evidence and arguments of both parties, we conclude that Praxair has failed to carry its burden of demonstrating, by a preponderance of the evidence, that independent claim 1 is unpatentable. Because Praxair’s obviousness analysis for dependent apparatus claims 2–11, as well as the dependent method claims 12–16, asserted in each of the grounds in this proceeding relies on the deficient asserted combination including Bathe and Peters, we similarly are not persuaded that Praxair has sustained its burden of demonstrating, by a preponderance of the evidence that claims 2–16 are unpatentable.” slip op. at 27

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

    “argument and testimony that Peters’s valve could work on Bathe’s cylinder does not explain why or how a person of skill in the art would combine Bathe and Peters, only that they could. PO Resp. 43–44. That Bathe could be modified by simply placing Peters’s valve on the cylinder to control gas flow from the cylinder, does not, alone, satisfy the requirements for combining the prior art. See InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014) (Experts “testimony primarily consisted of conclusory references to her belief that one of ordinary skill in the art could combine these references, not that they would have been motivated to do so.”). Petitioner’s challenge lacks an adequate motivation, not only to incorporate the smart valve of Peters into Bathe, but also to: (1) repurpose the incorporated valve by using (a) its “memory to store gas data comprising one or more of gas identification, gas expiration date and gas concentration” and (b) its processor and transmitter “to send and receive wireless optical line-of-sight signals to communicate the gas data to the control module that controls gas delivery to a subject” and (2) modify the Bathe system, such that its CPU would receive the wirelessly transmitted gas concentration data, even though the CPU already receives (and uses) flow and operator input data to provide a desired NO concentration. See Ex. 1005, 6:5–20.” slip op. at 21

  • Expert testimonyPetitioner expert discountedOther

    “read [Bathe] and been motivated to apply subsequent improvements to component parts of that system, such as the improved valve of [Peters].” Ex. 1002 at ¶ 112 (citing Ex. 1005, 6:11–15). Dr. Stone does not, however, point to any persuasive evidence or disclosure in Bathe, or provide sufficient explanation or reasoning to support this statement. See id. In particular, Dr. Stone does not describe what the “improvements” would have been or provide sufficient rationale as to why Bathe, which already has a connection between a supply cylinder and a gas delivery device and teaches verification of gas concentration from the cylinder by sensor 65 in the delivery system, would be improved by Peters’s manually actuated valve handle and included memory to meet the limitations of the independent claims. See Ex. 1005, 6:11–15. We find Dr. Stone’s testimony deficient as to showing any suggestion in Bathe or otherwise that would have motivated one of skill in the art to add Peters’s valve and memory to Bathe. We are also not persuaded that a person of skill in the art would have” slip op. at 23

  • ExcludeMotion to exclude, deniedDenied

    “D. INO’s Motion to Exclude Patent Owner seeks to exclude the testimony of Dr. Robert Stone (Exs. 1002, 2020). Because we do not rely on Dr. Stone’s testimony in a manner adverse to INO, the motion to exclude is dismissed as moot.” slip op. at 28

  Patent outcomesUS 8,573,210 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,573,210
• Praxair Distribution, Inc. v. Ino Therapeutics, LLCNo claims unpatentable
  PTAB · Sep 15, 2016 · IPR2015-00889 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1–7 were not shown unpatentable as obvious over the asserted combinations because Praxair did not establish a sufficient reason to combine the references.

  RulingsFinal written decision

  • ExcludeOther

    “D. INO’s Motion to Exclude Patent Owner seeks to exclude the testimony of Dr. Robert Stone (Exs. 1002, 2020). Because we do not rely on Dr. Stone’s testimony in a manner adverse to INO, the motion to exclude is dismissed as moot.” slip op. at 25

  • Skill levelOther

    “B. The Level of Ordinary Skill in the Art Praxair asserts that a person of ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, computer science, computer engineering, or the equivalent, and would have had at least two years’ experience in biomedical engineering designing medical gas delivery or monitoring systems.” Pet. 9–10 (citing Ex. 1002 ¶¶ 17–18). INO does not expressly dispute the general level of skill in the art proffered by Praxair but adds through its declarant, Mr. Warren P. Heim, that one of skill in the art would “know Food and Drug Administration (FDA) Current Good Manufacturing Practices.” Ex. 2021 ¶ 107.” slip op. at 15

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

    “presented by both parties and the prior art itself, we find that Praxair has not shown a sufficient reason for a person of ordinary skill in the art to have made the proposed combination of Bathe, Peters, FR ’804, and the IR Standard. PO Resp. 36–53. INO points out, correctly, that Praxair has not shown that a person of ordinary skill in the art would have been motivated to combine Peters’s smart valve, having a memory for compiling data for billing and invoicing functions, with Bathe. Id. Moreover, we are not persuaded that Praxair’s inability to provide sufficient motivation for combining Peters and Bathe is remedied by the introduction of FR ’804, particularly given that Bathe already included an in-line sensing unit to sense and verify the gas concentration from the cylinder as required by FDA guidance. Id. at 47.” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableNot shown unpatentable

    “time of litigation. KSR, 550 U.S. at 421 (“[a] factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning”). “Good ideas may well appear ‘obvious’ after they have been disclosed.” Arkie Lures, Inc. v. Gene Larew Tackle, Inc., 119 F.3d 953, 956 (Fed. Cir. 1997). In the instant case, Praxair’s attempt to transform Bathe from having a sensed in-line gas concentration being used to perform verification of gas supply and gas delivery to a subject or patient into a device receiving gas concentration data from Peters’s handle and memory on the gas supply cylinder in order to verify and control gas delivery to a patient smacks of hindsight reasoning. After considering the evidence and arguments of both parties, we conclude that Praxair has failed to carry its burden of” slip op. at 24

  Patent outcomesUS 8,573,209 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,573,209
• Caterpillar Inc. v. Miller UK LimitedAll claims unpatentable
  PTAB · Jun 29, 2016 · IPR2015-00433 · APJ Mitchell G Weatherly · IPR · Final written decision

  Claims 1, 3, 4, 6, 8, and 9 are unpatentable as obvious over Aker and Peterson because Caterpillar’s unrebutted evidence established obviousness by a preponderance.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “claims including the coupler having a sidewall with an aperture, the safety pin, and the removable plate occluding a portion of the aperture. Pet. 16–45. Caterpillar also proffers similarly detailed testimony from Dr. Fronczak in support of its contentions. Ex. 1002 ¶¶ 24–72. Caterpillar concedes, however, that the plate in Aker that occludes the aperture is welded in place and thus not “removable.” Pet. 26 (independent claim 1), 40 (independent claim 6). The plate that Caterpillar identifies in Aker is highlighted in yellow in the modified version of Aker’s Figure 7 reproduced below. The modified version of Aker’s Figure 7 illustrates a spring-loaded locking pin mechanism that includes a circular plate (unnumbered and highlighted in yellow) that is welded to one end of the cylindrical container 86. Dr. Fronczak testifies that an ordinary artisan would understand Aker’s circular occluding plate to be welded in place based on the apparent appearance of a “fillet-like weld” at the joint between the plate and Aker’s cylindrical container 86. Ex. 1002 ¶ 36.” slip op. at 5

  • BurdenFwd all claims unpatentableUnpatentable

    “evidence adduced by Caterpillar demonstrated a reasonable likelihood that the combination of Aker and Peterson rendered claims 1, 3, 4, 6, 8, and 9 obvious. Dec. 5–9. More specifically, we determined that Caterpillar had had proffered evidence that was persuasive at the time of institution on every issue relating to its challenge that claims 1, 3, 4, 6, 8, and 9 were obvious. We must now determine whether the record before us establishes by a preponderance of the evidence that claims 1, 3, 4, 6, 8, and 9 are unpatentable as obvious in view of Aker and Peterson. 35 U.S.C. § 316(e).” slip op. at 6

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

  Patent outcomesUS 7,914,226 unpatentable
  § 103 obviousnesscites KSR
  Patents in suitUS 7,914,226
• E*trade Financial Corporation / E*trade Securities, LLC et al. v. Droplets, Inc.All claims unpatentable
  PTAB · Jun 23, 2016 · IPR2015-00470 · APJ Linda M Gaudette · IPR · Final written decision

  Claims 1–25 are unpatentable: all under §103 over Franco PCT and Moshfeghi, claims 1, 7, 9, 10, 12, 18, 20, 21, and 25 under §102 by Frese, and claim 25 under §103 over Ferris and …

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner relies on the testimony of Dr. Burback in support of its proposed definition of the level of ordinary skill in the art. See id. (citing Ex. 1002 ¶¶ 37–40). We find Dr. Burback is qualified to give an opinion as to the level of ordinary skill in the art in the field of internet-based client/server interactivity. See Section II, above. Based on our own review of the ’115 patent and the applied references, and the types of problems and solutions described therein, we agree with Dr. Burback’s opinion on the level of ordinary skill in the art. In its Patent Owner Response, Patent Owner does not comment on Petitioner’s proposed definition of the level of ordinary skill in the art, or offer an alternative definition. See generally PO Resp.9 Accordingly, we adopt Petitioner’s definition of the level of ordinary skill in the art for purposes of this proceeding. V. CLAIM CONSTRUCTION In an inter partes review, we interpret claim terms in an unexpired” slip op. at 30

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

    “Having now considered Patent Owner’s Response and Petitioner’s Reply, and evidence in support thereof, as well as the arguments made during the oral hearing, we maintain our initial determination that no express construction is needed to determine the patentability of the challenged claims in this inter partes review. See Vivid Techs., 200 F.3d at 803.” slip op. at 32

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

    “We agree with Petitioner that Patent Owner’s arguments are not supported by the evidence of record and accord little weight to the testimony of Dr. Wilson with respect to this challenge as a result of the errors and inconsistencies in his testimony. See Pet. Reply 9–16. We find Petitioner’s arguments are supported by the evidence of record and accord weight to Dr. Burback’s testimony that one of ordinary skill in the art would have been motivated to modify Franco PCT based on Moshfeghi, and possessed the requisite level of skill to make such modifications. See Ex. 1002 ¶¶ 55–57. In particular, Petitioner has identified a teaching or suggestion of each of the limitations recited in the challenged claims in Franco PCT and/or Moshfeghi, explained the motivation to combine these references in the manner claimed, and shown that one of ordinary skill in the art would have had a reasonable expectation of success in making the proposed combination. See Pet. 17–25. We adopt these findings and conclusions as our own. Consequently, we conclude Petitioner has shown by a preponderance of the evidence that each of claims 1–25 would have been unpatentable over Franco PCT and Moshfeghi.” slip op. at 40

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

    “requiring application logic within a remotely stored application. See Dec. on Inst. 23. As noted above, Patent Owner has not disputed that the claims encompass an embodiment of the “remotely stored application” that comprises multiple layers and modules, e.g., the application may include a separate interface and logic module. Patent Owner contends, however, that Frese cannot anticipate because it does not include an explicit description of, or a figure depicting, application program 22 and AIM 24 as layers within an application, as in Figure 7 of the ’115 patent. See PO Resp. 32 (“Frese clearly and unambiguously illustrates the AIM 24, LRI 28 and PTOM 26 as being outside of the application program 22.”) (citing Ex. 2022 ¶ 63). Patent Owner suggests that the claim limitation “remotely stored application” can be read properly only on Frese’s application program 22, because this is consistent with Frese’s use of the term “application.” See id. at 32–35. We are not persuaded by Patent Owner’s argument, because a finding of anticipation requires only that the claims, as construed, “read on” something disclosed in the reference, i.e., all limitations of the claim are found in the reference, or fully met by it. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); see also Hewlett-Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314, 1324 n.6 (Fed. Cir. 2003) (“The anticipation analysis asks solely whether the prior art reference discloses and enables the claimed invention, and not how the prior art characterizes that disclosure.”). Here, we note that Frese’s disclosure undermines Patent Owner’s argument because it acknowledges that, in at least one instance, AIM 24 is implemented as a component of application program 22. See, e.g., Ex. 1005, 10:53–55 (stating “AIM 24 is typically implemented by replacing . . . a component of application program 22”). We determine that Petitioner has identified a description of the invention as recited in each of the challenged claims, and conclude Petitioner has shown by a preponderance of the evidence that claims 1, 7, 9, 10, 12, 18, 20, 21, and 25 are anticipated by Frese. See Pet. 26–38.” slip op. at 47

  Patent outcomesUS 8,402,115 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,402,115
• Caterpillar, Inc. v. Miller International, Ltd.All claims unpatentable
  PTAB · Jun 14, 2016 · IPR2015-00434 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1–23 and 39–42 are unpatentable as obvious over Hill and Miller ’805, with Miller ’112 for claim 12 and Miller ’062 for claim 23.

  RulingsFinal written decision

  • BurdenOther

    “period set forth in the Scheduling Order. Patent Owner neither sought authorization to file a Patent Owner Response after the deadline, nor indicated that it wished to file such a Response or any further papers in this proceeding. We have before us, therefore, unrebutted argument and evidence as set forth in the Petition. Nonetheless, Petitioner bears the burden to show, by a preponderance of the evidence, that the challenged claims are unpatentable. For the reasons that follow, we determine that Petitioner has shown by a preponderance of the evidence that claims 1–23 and 39–42 of the ’914 patent are unpatentable.” slip op. at 2

  • Skill levelOther

    “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 ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). In that regard, an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. A prima facie case of obviousness is established when the prior art itself would skill in the art. In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976). The level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “had good reason to include Miller ’805’s gravity operated blocking bar 37 in Hill’s coupler, because, as expressly discussed in Miller ’805, in the event of hydraulic failure of the actuator maintaining the second latching mechanism closed, Miller ’805’s blocking bar 37 would prevent opening of latching mechanism 17. Pet. 22–23 (citing Ex. 1002 ¶¶ 49–50; Ex. 1004, 6:7–18; this argument, alleging that Miller’s teachings, as well as safety concerns, would have motivated one of ordinary skill in the art to add Miller’s blocking bar 37 to Hill’s coupler because “if the hydraulic actuator 32 of Hill ’590 fails or malfunctions, the powered latch may not be maintained in a latched position, allowing the bucket or other accessory to disengage or release from the second jaw (i.e., pin-receiving recess 22).” Ex. 1002 ¶ 50. As cited by Dr. Fronczak, we find that Miller ’805 states that “even if there is a hydraulic failure . . . the blocking means 25 will still prevent the latching hook 17 moving to an unlatched position.” Ex. 1004, 6:15–18; see also Ex. 1002 ¶ 50 (citing id.). Dr. Fronczak further testifies that the blocking mechanism 37, as it is influenced by gravity and operates independently of the first latching mechanism, would operate in combination with Hill’s coupler no differently than it does in Miller ’805. Id. ¶¶ 54–56. We are persuaded by Petitioner’s rationale and explanation, and credit Dr. Fronczak’s testimony, which are consistent with our understanding of Hill and Miller ’805, that blocking the second latching mechanism retains both pins of the attachment, such as a bucket, engaged in the coupler jaws and improves the safety of Hill’s device in a way that would have been recognized by an ordinary artisan at the time of invention of the ’914 patent. Ex. 1004, 6:15–18; Ex. 1002 ¶ 50. We find Dr. Fronczak’s reasoning persuasive, that the purpose of blocking the second latching mechanism, as shown and described in Miller ’805, ensures that the excavator bucket remains entirely secured even in the event of a hydraulic failure, and would have been apparent at the time of filing of the ’914 patent to one of ordinary skill in the art. Ex. 1002 ¶¶ 50–51.” slip op. at 16

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

    “Miller ’805 would include a coupler with a blocking structure and function that meets all the elements of claims 1 and 39, including selectively blocking the second latching mechanism in a “blocking position.” The evidence presented by Petitioner is persuasive that one of ordinary skill in the art would have used Miller’s blocking structure in combination with Hill’s coupler to maintain the second latching mechanism securely in place improving the safety of the coupler such that in the event of hydraulic failure the powered second latching mechanism does not release the excavator pins, and the bucket is maintained in an entirely secured manner with the coupler. We have also reviewed each of the challenged dependent claims in light of the combination of Hill and Miller ’805, and we find that the cited portions of Hill and Miller ’805 teaches or suggests the elements of claims 2–11, 13–22, and 40–42. Pet. 25–41 (citing Ex. 1002 ¶¶ 58–66, 68, 70, 72– 76, 83–87, 89–93, 95, 96, 98; Ex. 1003, 4:27–31, 5:12–13, 5:23–26, 6:4–10, 6:16–32, 10:18–23, 13:12–20, Figs. 1, 2, 5, 18, 19; Ex. 1004, 2:1–5, 4:23– 28, 5:23–29, 5:52–67, Figs. 1, 7, 8), 49–53 (citing Ex. 1002 ¶¶ 124–125, 29, 5:52–64, 6:7–9, 8:6–17, Figs. 7, 12(2), 12(4)). Petitioner’s asserted rationales for the challenged dependent claims are also persuasive on the record presented. See id. For the foregoing reasons, we agree with, and adopt as our own, Petitioner’s rationale to combine Hill and Miller ’805. We further determine that Petitioner has demonstrated by a preponderance of the evidence that claims 1–11, 13–22, and 39–42 of the ’914 patent are obvious over Hill and Miller ’805.” slip op. at 20

  Patent outcomesUS 8,112,914 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,112,914
• Caterpillar, Inc. v. Miller International, Ltd.All claims unpatentable
  PTAB · Jun 14, 2016 · IPR2015-00435 · APJ Scott A Daniels · IPR · Final written decision

  Claims 24–38 are unpatentable under § 103: claims 24, 25, and 33–38 over Hill and Miller ’805; claims 26–32 over those references and Miller ’062.

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “period set forth in the Scheduling Order. Patent Owner neither sought authorization to file a Patent Owner Response after the deadline, nor indicated that it wished to file such a Response or any further papers in this proceeding. We have before us, therefore, unrebutted argument and evidence as set forth in the Petition. Nonetheless, Petitioner bears the burden to show, by a preponderance of the evidence, that the challenged claims are unpatentable. For the reasons that follow, we determine that Petitioner has shown by a preponderance of the evidence that claims 24–38 of the ’914 patent are unpatentable.” slip op. at 2

  • Skill levelOther

    “The level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “In our Decision to Institute we determined constructions consistent with the broadest reasonable construction. Inst. Dec. 7–9. Since our determination, no further papers or evidence have been filed, and thus, we do not perceive any reason or evidence that now compels any deviation from our initial constructions. Accordingly, the following claim constructions apply to this Decision:” slip op. at 8

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

    “had good reason to include Miller ’805’s gravity operated and remotely moveable blocking bar 37 in Hill’s coupler, because, as specifically discussed in Miller ’805, in the event of hydraulic failure of the actuator maintaining the second latching mechanism closed, Miller ’805’s blocking bar 37 would prevent opening of latching mechanism 17. Pet. 19–20 (citing Ex. 1004, 6:7–18; KSR, 550 U.S. at 416, 420). Dr. Fronczak’s testimony supports this argument asserting that Miller ’805’s teachings relating to prevention of a powered latch from disengaging in the event of a hydraulic failure are safety concerns that would have motivated one of ordinary skill in the art to add Miller’s blocking bar 37 to Hill’s coupler. Ex. 1002 ¶ 46. Dr. Fronczak explains persuasively that “if the hydraulic actuator 32 of Hill ’590 fails or malfunctions, the powered latch may not be maintained in a latched position, allowing the bucket or other accessory to disengage or release from the second jaw (i.e., pin-receiving recess 22).” Id. at ¶ 47. As cited by Dr. Fronczak, we find that Miller ’805 states that “even if there is a hydraulic failure . . . the blocking means 25 will still prevent the latching hook 17 moving to an unlatched position.” Ex. 1004, 6:15–18; see also Ex. 1002 ¶ 50 (citing id.). Dr. Fronczak further testifies that blocking mechanism 37, as it is influenced by gravity and operates independently of the other latching mechanism, would be understood by one of skill in the art” slip op. at 15

  Patent outcomesUS 8,112,914 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,112,914
• Caterpillar, Inc. v. Miller International, Ltd.All claims unpatentable
  PTAB · Jun 14, 2016 · IPR2015-00416 · APJ Scott A Daniels · IPR · Final written decision

  The sole claim of the ’982 patent is unpatentable under § 103 over the Coupler Manual and Hub, and over the Coupler Manual, Hub, and Teo.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “someone with a background and training in the design of earth-moving equipment and who is presumed to have knowledge of prior art equipment, including couplers . . . that includes familiarity with international design symbols, including the ISO 3864 and ISO 7100.” Pet. 23 (citing Ex. 1013 ¶¶ 13–18, 20). Petitioner provided the Declaration of Mr. Alan Ball in support of its obviousness contentions. See Pet. 1; Ex. 1013. We find Mr. Ball’s testimony, as an industrial designer with approximately 30 years of design experience in a broad range of construction and industrial product fields, persuasive as to the level of ordinary skill in the art of designing and labeling products for user interface and safety. Ex. 1013 ¶¶ 5–6. Based on Mr. Ball’s testimony we determine that a designer of ordinary skill in the art would have, inter alia, been a designer with “at least five years of . familiar with relevant industry standards such as those published by standards organizations such as the ISO or ANSI and the techniques for applying a two-dimensional design to a three-dimensional surface.” Id. at ¶ 20. slip op. at 7

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Analogous artDecided for petitioner

    “We are persuaded by Petitioner’s evidence that the Coupler Manual is a suitable primary reference because the Coupler Manual warning symbol gives the same overall visual impression when compared to the claimed warning symbol design as a whole. Ex. 1013 ¶ 31, and see Durling, 101 F.3d at 103. We are further persuaded that any apparent minor differences in the designs are of little, if any, significance to the ordinary observer below, is an international standard and would have been universally understood by a person of skill in the art. Ex. 1008, 10. The General warning sign, above, is illustrated by an exclamation point within a yellow triangle and black triangular border. The requirement that the design characteristics of the proposed primary reference be the same as the claimed design does not imply that the appearance of the prior art article must be identical to the claimed design. Cf. In re Lamb, 286 F.2d 610, 611 (CCPA 1961) (“[T]he mere fact that there are differences over the prior art structures is not alone sufficient to justify a holding that the design is patentable.”). Based on the evidence presented we determine that the Coupler Manual equilateral triangle warning symbol is basically the same as the claimed design and, therefore, a valid primary reference.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “We are persuaded by Petitioner’s evidence that Hub is a suitable secondary reference because Hub, like the Coupler Manual, also discloses a coupler for an earthmoving machine. Compare Ex. 1010, 6, with Ex. 1005, Illustration 1. Petitioner’s reasoning and reliance on Mr. Ball’s testimony are also persuasive that one of ordinary skill in the art would look to the curved portion of Hub’s coupler facing the operator “as the reasonable location for moving the warning symbol disclosed in the Coupler Manual” because, in this location on the coupler, the symbol would be “readily visible to the operator of the earth-moving equipment.” Pet. 46–47 (citing Ex. 1013 ¶ 31). For the foregoing reasons, we agree with, and adopt as our own, Petitioner’s analysis under Durling and the combination of the Coupler Manual and Hub. Based on that analysis, we conclude that Petitioner has” slip op. at 11

  Patent outcomesUS D673,982 unpatentable
  § 103 obviousness
• Zimmer Biomet Holdings, Inc. / Zimmer Inc. et al. v. Advanced Orthopaedic Solutions, Inc.Institution denied
  PTAB · Jun 7, 2016 · IPR2016-00311 · APJ Lora M Green · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 6–11, 13–15, 19, and 20 were unpatentable over the asserted grounds.

  RulingsInstitution decision

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

    “We have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon considering the Petition and the Preliminary Response, we determine that Petitioner has failed to demonstrate a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims. Accordingly, we decline to institute an inter partes review.” slip op. at 2

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

    “We agree with Patent Owner that Petitioner has not sufficiently established that Shavit discloses an insert having a lower surface that is operative to contact a bone screw. Petitioner relies primarily on Figures 1B and 4 of Shavit to establish that the insert contacts the bone screw. As noted by Patent Owner (Prelim. Resp. 16), “[i]t is well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.” Hockerson-Halberstadt, Inc. v. Avia Group Int’l Inc., 222 F.3d 951, 956 (Fed. Cir. 2000). “Ordinarily drawings which accompany an application for a patent are merely illustrative of the principles embodied in the alleged invention claimed therein and do not define the precise proportions of elements relied upon to endow the claims with patentability.” In re Olson, 212 F.2d 590, 592 (CCPA 1954).” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “In challenging claim 19 over the combination of Shavit and Kilpela, as to the limitation that “said lower surface [of an insert] operative to engage a bone screw extending through said aperture,” Petitioner states that for the reasons discussed as to claim 8, Shavit in view of Kilpela renders that limitation obvious. Pet. 37 (emphasis added). Petitioner relies on that same analysis as to the challenge of claim 19 over the combination of Shavit, Kilpela, and Bramlet. Id. at 46. In its discussion of claim 8 as being obvious over the combination of Shavit and Kilpela, Petitioner relies on Kilpela for a reason to have a longitudinal passageway through the insert. Id. at 28. As to the remaining limitations of claim 8, which depends from claim 6, Petitioner relies on its discussion of claim 6 as being anticipated by Shavit. Id. Petitioner, therefore, does not rely on either Kilpela or Bramlet to make up the deficiency of Shavit as discussed above as to the anticipation challenge of independent claim 6. Thus, for the reasons discussed above in Section II.B.ii.a, we determine that Petitioner has not sufficiently established that claim 19 is rendered by the combination of Shavit and Kilpela, or the combination of Shavit, Kilpela, and Bramlet. Similarly, Petitioner relies on its discussion of independent claims 6, 13, and 19 in contending that claim 8 is rendered obvious by the combination of Shavit and Kilpela (Pet. 28), that claims 14, 15, and 20 are rendered obvious by the combination of Shavit and Kilpela (Pet. 31–33, 39– 40) or by the combination of Shavit, Kilpela, and Bramlet (Pet. 40–45, 47), and that claim 11 is rendered obvious by the combination of Shavit and Bramlet (Pet. 47–48). As Petitioner again does not rely on either Kilpela or Bramlet to remedy the above discussed deficiency of Shavit, we determine also that Petitioner has not sufficiently established that claims 8, 11, 14, 15, and 20 are rendered by the Shavit in combination with Kilpela and/or Bramlet.” slip op. at 18

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

    “We determine that, for purposes of this Decision, none of the terms in the challenged claims require express construction at this time. See, e.g. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 3 Bramlet et al., US Patent No. 6,443,954 B1, issued Sep. 3, 2002 (Ex. 1007) (“Bramlet”). 1999) (noting that only claim terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy).” slip op. at 8

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,092,454

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.