• Aroma360, LLC v. Air Esscentials, Inc.Some claims unpatentable
  PTAB · Oct 6, 2026 · IPR2025-00707 · APJ Eric C Jeschke · IPR · Final written decision

  Claim 5 is unpatentable over Gao-2 and over Gao-2 with Goubet; claims 1, 3, 4, and 6–8 were not shown unpatentable on any ground, and substitute claim 17 was denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “As noted in the Decision on Institution, Petitioner’s proposed definition appears generally consistent with the record, including the prior art. See Dec. Inst. 8 (citing In re GPAC Inc., 57 F.3d at 1579). We remove the phrase “at least” in both listed options, however, as that phrase adds ambiguity. Further, Patent Owner has not argued at trial that Petitioner’s proposal for the level of ordinary skill leads to an improper understanding of how a skilled artisan would have understood either the challenged patent or the prior art. In the analysis below, we continue to apply the level of ordinary skill in the art adopted in the Decision on Institution, as proposed by Petitioner.” slip op. at 9

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

    “Neither Petitioner nor Patent Owner propose explicit constructions for any claim terms. Pet. 16–17; PO Resp. 5–6. Based on the complete record, we need not construe explicitly any claim terms because doing so would not change the outcome of the analysis below. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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 10

  • Expert testimonyPetitioner expert creditedDecided for patent owner

    “As an initial matter, the record here does not support any sound basis to disregard the entirety of Dr. Micklow’s Declaration for allegedly not reviewing the parties’ claim constructions. See Pet. Reply 2–3 (citing Ex. 1046, 115:15–18). Contrary to Petitioner’s argument, in the cited 11 This refers to the recitation in clauses 1F and 5F that the “diffusion assembly is disposed between said upper chamber and said lower chamber.” discussion, Dr. Micklow does not indicate that he applied an incorrect understanding of a claim term. Cf. Cordis Corp. v. Bos. Sci. Corp., 658 F.3d 1347, 1357–58 (Fed. Cir. 2011) (disregarding testimony “based on an incorrect understanding of the claim construction”), cited at Pet. Reply 1; see also Pet. Reply 3 (arguing that “Dr. Micklow’s opinion that the prior art does not render the claims obvious is premised on an interpretation of certain claim limitations that are inconsistent with both parties’ constructions” (emphasis added)). Instead, we read Dr. Micklow’s testimony as clarifying that he was not involved in claim construction at all and that, as stated, he “made [his] opinions based on what [he] read in the patents.” Ex. 1046, 112:11–12; see also id. at 115:15–18 (“I don’t know if I would even apply claim construction. I applied engineering principles to a document that had been published with the patent office.”).” slip op. at 12

  • BurdenNot shown unpatentable

    “referring to the same direction as the separation of the “upper chamber” and “lower chamber” (vertically in both Figure 6 of the challenged patent and Figure 1 of Goubet), we turn back now to Petitioner’s discussion of clause 1F, which includes the limitation at issue. There, Petitioner does not discuss why the “diffusion assembly” is allegedly “disposed between” the “upper chamber” and “lower chamber,” but instead, Petitioner discusses why a component of the “diffusion assembly”—the “atomizer assembly”—is allegedly “disposed between” the “upper chamber” and “lower chamber”: Pet. 39. In the end, we need not assess whether the “atomizer assembly” identified by Petitioner is “disposed between” the “upper chamber” and “lower chamber” under the proper construction of that term (which, again, we need not and do not determine here) because the “disposed between” limitation does not involve the “atomizer assembly.” Instead, we find that, by failing to address why the identified “diffusion assembly” is “disposed between” the identified “upper chamber” and “lower chamber,” Petitioner has failed to provide persuasive evidence that Goubet discloses or suggests the “disposed between” limitation. Pet. 38–39 (discussing the claim language “said diffusion assembly is disposed between said upper chamber and said lower chamber” but only discussing the location of the “atomizer assembly”); see 35 U.S.C. § 316(e) (“In an inter partes review . . . , the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.”). For the reasons above, we find, based on the complete record, that Petitioner has not shown by a preponderance of the evidence that Goubet discloses or suggests the “disposed between” limitation.” slip op. at 22

  Patent outcomesUS 10,092,918 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,092,918
• Trove Brands, LLC v. Camelbak Products, LLCSome claims unpatentable
  PTAB · Jun 2, 2026 · IPR2025-00140 · APJ Carl M Defranco · IPR · Final written decision

  Claims 1–6 are unpatentable as obvious; claims 7–18 were not shown unpatentable because Ribarits does not disclose a mouthpiece disposed on the pivotal mount.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Trove contends that a person of ordinary skill in the art “would have had an undergraduate degree in mechanical engineering or equivalent coursework, and a year or more of experience in designing, prototyping, and/or manufacturing fluid containers or similar products” and that “[m]ore work experience may substitute for a lower level of education, and vice versa.” Pet. 15 (citing Ex. 1002 ¶ 25). While CamelBak offers “a similar, though slightly different level,” it nonetheless “discerns no material difference between the definitions provided by the parties for purposes of the Board’s decision in this proceeding.” PO Resp. 27. That being the case, we adopt Trove’s proposed definition of the level of skill in the art, as it is 2 JP 2002-211613A, published July 31, 2002 (Ex. 1004, “Nakajima”). 3 WO 2004/063042 A2, published July 29, 2004 (Ex. 1006, “Ribarits”). 4 US 4,485,963, issued Dec. 4, 1984 (Ex. 1007, “Panicci”). 5 US 6,523,711 B1, issued Feb. 25, 2003 (Ex. 1008, “Hughes”). reasonable and consistent with what is reflected in the asserted prior art and the specification of the ’250 patent. B. Claim Construction” slip op. at 7

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

    “We will not bite. CamelBak’s original assertion—that the plain and ordinary meaning of the constituent parts of “mouth” and “piece” is “a piece (or part) that goes in the mouth”—underscores the fallacy of CamelBak’s additional physical contact requirement. PO Resp. 28 (emphasis added). Indeed, in support of that earlier assertion, CamelBak pointed to the very dictionary definition that we relied on at institution in construing “mouthpiece” as a part that either “goes in the mouth or to which the mouth is applied.” See id. at 31 (citing Ex. 2005 (emphasis added)). Even the original testimony of CamelBak’s own expert confirms that one skilled in the art “would understand that the term ‘mouthpiece’ is commonly known in the art as a part designed for a user’s mouth,” without any requirement for physical contact with the mouth. Ex. 2016 ¶ 58 (citing Ex. 2005) (emphasis added)). And nothing in the Specification limits that common understanding. Although, indisputably, the Specification contemplates an embodiment where the user physically contacts the mouthpiece with their teeth (i.e., a bite-actuated mouthpiece), it also contemplates an embodiment where the user simply inserts the bottle in their mouth and commences fluid flow by squeezing it. See Ex. 1001, 10:9–13. That disclosure supports a meaning of “mouthpiece” that simply requires placement in the opening of the user’s mouth without necessarily incurring physical contact with some portion of the mouth, such as the teeth, tongue, or lips. Indeed, had CamelBak wished to premise the meaning of “mouthpiece” on some sort of physical contact with the mouth, it knew how to do so. For instance, the independent claims of CamelBak’s earlier ’255 patent, which is the subject of the related 1137 IPR, are limited in just such a manner, as they recite “wherein the resilient mouthpiece is adapted to resiliently compress responsive to compressive forces applied to the resilient mouthpiece by a user’s teeth.” Ex. 2023, at 20–25 (emphasis added). Thus, we reject CamelBak’s attempt to narrow our construction of “mouthpiece” to something other than “a part (as of an instrument) that goes in the mouth or to which the mouth is applied.” Neither the intrinsic nor extrinsic evidence supports the narrower construction proposed by CamelBak.” slip op. at 11

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “In reply, Trove argues that CamelBak’s “novel” construction that the mouthpiece moves with rotational motion about that same axis of rotation defined by the two joint as the pivotal mount and in the same direction as the pivotal mount “are inconsistent with the claim language’s plain and ordinary meaning and find no support in the intrinsic and extrinsic record.” See Pet. Reply 16. But, because we find that, when properly construed, the claimed “pivotal movement with the pivotal mount” about “two joints that define a pivotal axis” requires that the mouthpiece rotate about the same axis and in the same direction as the pivotal mount, we reject Trove’s argument as unavailing. And, although we agree with Trove that Nakajima’s mouthpiece engages in counter-clockwise rotation about a “Second Pivot Axis” when Nakajima’s lid 4 is opened (id. at 20–22), that rotation is about a different axis—one defined by Nakajima’s protrusions 24 rather than the claimed “pivotal axis” defined by Nakajima’s hinge shafts 19—and in a different manner—an upward and counterclockwise path rather than the claimed “pivotal movement with the pivotal mount” defined by Nakajima’s lid 4. Finally, in an alternative theory, Trove and its expert use “image- manipulation tools” in an attempt to show that Nakajima’s mouthpiece engages in some initial “clockwise-rotation” with Nakajima’s lid as it is opened. See Pet. Reply 18–24. We reject that theory as entirely conjectural and unsupported by the evidence.” slip op. at 39

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

    “We disagree. As discussed above, the proper construction of “for pivotal movement with the pivotal mount” requires that the mouthpiece mirror the rotational movement of the pivotal mount, i.e., rotate about the same axis as the pivotal mount and in the same direction as the pivotal mount. See supra § II.B.3. But Nakajima’s mouthpiece does neither, and, thus, does not exhibit the claimed “pivotal movement with the pivotal mount” about “two joints that define a pivotal axis for . . . the pivotal mount axis,” as properly construed.” slip op. at 36

  Patent outcomesUS 11,851,250 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 11,851,250
• Lululemon USA Inc. v. Nike, Inc.Some claims unpatentable
  PTAB · May 21, 2025 · IPR2024-00159 · APJ Carl M Defranco · IPR · Final written decision

  Claims 8, 9, 14, 15, and 19 are unpatentable over Minami; claims 1–3, 7, 16–18, and 20 were not shown unpatentable over Good or Munsing.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “lululemon contends, and Nike does not dispute, that a person skilled in the art in the relevant time frame would have had “at least a bachelor’s degree in mechanical engineering, textile engineering, or similar technical degree and at least 3 years of experience working with knitted textiles for use in fabric-based articles, including apparel such as footwear” and such person’s “additional experience compensates for any differences in that person’s education as stated above.” Pet. 13–14 (citing Ex.1003 ¶¶ 33–35); see also PO Resp. 14 (“For purposes of this proceeding, Nike applies lululemon’s proposed level of skill in the art.”). We find that lululemon’s proposed definition is consistent with the problems and solutions described in the ’046 patent and the prior art of record. Thus, we adopt the parties’ agreed-upon definition of the level of skill in the art.” slip op. at 6

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

    “We are not persuaded by lululemon’s attempt to equate the term “channel” in that passage with an open-periphery configuration. Nowhere does that passage indicate that the “channel” has an open-periphery. Instead, lululemon merely presumes, without support, that channels are open-periphery structures. More accurately, the terms “tunnel” and “channel” in the passage cited by lululemon are used synonymously. That is made clear by the overall context of the ’046 patent at issue, which is directed to how tubular rib structures 126 are formed by “first” and “second” curved portions 416 and 418 that are “knitted together” to define “hollow tube 112.” See Ex. 1001, 10:16–11:14, Figs. 4, 5 (emphasis added). In particular, the sentence cited by lululemon describes hollow tube 112 as being “disposed between” first and second curved portions 416 and 418, which Figures 4 and 5 of the ’046 patent clearly depict in a closed-periphery configuration. See id. at 10:66–11:3, Figs. 4, 5. Moreover, the very next sentence expressly describes that hollow tube 112 has “a generally cylindrical or elliptical shape” wherein “[t]he diameter of one hollow tube and the diameter of other hollow tubes may differ in some embodiments.” Id. at 11:3–14 (emphases added). We are not aware of any open-periphery channels being described as having a cylindrical or elliptical shape, nor are we aware of such a channel being described as having a diameter. Thus, lululemon’s proposed claim construction ignores the context surrounding the ’046 patent’s description of the tubular rib structures when it describes them as having the configuration of a tunnel or channel.” slip op. at 10

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

    “We agree with Nike, given our construction of the claimed “tubular structures.” As shown in annotated Figures 1, 3, and 4 of Good (reproduced below), Good discloses a sock 12 having rib portions 22 (red) and webbed areas 24 (green). See PO Resp. 19. lululemon contends that Good’s rib portions 22 meet the claimed “tubular structures” because each rib portion 22 “roll[s] substantially together in the relaxed condition” and “has the shape of a tube, namely an elongate hollow structure.” Pet. 29–30. In support, lululemon points to Good’s Figure 3 (reproduced below center) as allegedly showing the tubular shape of Good’s rib portions 22. Id. at 30. Annotated Figure 3 is a vertical cross-section of rib portions 22 (red) shown in Good’s Figure 1. But, as Nike correctly notes, Good’s rib portions 22 are “C-shaped knitted portions,” which when stretched, go from an essentially C-shaped configuration (Figure 3) to a relatively flat, linear configuration (Figure 4). PO Resp. 19–20 (citing Ex. 2006 ¶¶ 48–49). Nowhere does Good disclose that the ends of C-shaped rib portions 22 ever meet and remain in a closed periphery configuration to form a hollow tube per our construction of “tubular structures” (as discussed above in Section II.B). In at least this way, Good’s C-shaped rib portions 22 differ from the claimed “tubular structures.”7 Thus, we find that Good does not disclose or otherwise suggest the claimed “tubular structures,” as properly construed, meaning that lululemon fails to demonstrate, by a preponderance of the evidence, that Good either anticipates claims 1–3, 7, 16–18, and 20, or, alternatively, renders obvious claim 3.” slip op. at 16

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “In our Institution Decision, we said that Munsing lacks the claimed “tubular structures” because “nowhere does Munsing indicate that the rows of stitches or loops form a rib that is tubular-like, let alone one with a closed periphery.” Inst. Dec. 10–12. During the trial phase, lululemon’s expert likewise agreed, conceding (on cross-examination) that Munsing only discloses non-tubular structures. See Ex. 2007, 40:9–41:11 (“Q [by Patent Owner’s counsel]: So you agree that . . . Munsing only discloses a nontubular rib? A [by lululemon’s expert]: That’s what I said.”). Nowhere does lululemon rebut that admission by its own expert, despite Nike noting it explicitly as a reason for rejecting Ground 2. Compare PO Resp. 25–26 (noting the admission of lululemon’s expert), with Pet. Reply 1–26 (addressing only Grounds 1 and 3, while omitting any mention of Ground 2, which is based on Munsing). Nor does lululemon ever dispute the preliminary findings in our Institution Decision as to why Munsing is not an anticipatory reference. Compare Inst. Dec. 10–12, with Pet. Reply 1–22. Thus, lululemon fails to demonstrate, by a preponderance of the evidence, that Munsing anticipates challenged claims 1–3, 7, 17, 18, and 20.” slip op. at 18

  Patent outcomesUS 9,375,046 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 9,375,046
• Lululemon Athletica Canada Inc. / Lululemon USA Inc. v. Nike, Inc.Some claims unpatentable
  PTAB · May 13, 2024 · IPR2023-00189 · APJ Stephen E Belisle · IPR · Final written decision

  Claims 1–4, 7, 8, and 11–16 are unpatentable over Arrasvuori; claims 5, 6, 9, 10, and 17–20 are not unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’256 patent, the background technical field, the prior art, and Petitioner’s unopposed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Dr. Lynch (Ex. 1003 ¶¶ 43, 44).” slip op. at 13

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

    “simultaneously communicate in real-time to the first user at the first location and the second user at the second location, an interface indicating whether the challenge has been met.” Ex. 1001, 40:64–67 (emphasis added). The claim language itself suggests that “continuously generat[ing]” an interface in “real-time” allows the interface to indicate whether a challenge “has been met,” and doing so “in real-time” suggests that updates to the interface are generated as developments occur that may affect whether the challenge “has been met.” Notably, the subject claim limitation explicitly recites “continuously” generating the interface “in real-time”; it does not recite— but easily could have if intended—“periodically” generating the interface (i.e., at predetermined time intervals independent of the occurrence of developments that may affect whether the challenge has been met).3” slip op. at 29

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artDecided for petitioner

    “Petitioner contends Arrasvuori qualifies as prior art under 35 U.S.C. §§ 102(a) and 102(e) based on its filing and publication dates. Pet. 24. Patent Owner does not contest the prior art status of Arrasvuori. Also, on this record, we have no evidence of an invention date other than the earliest possible effective filing date of the challenged claims. Thus, for purposes of this Decision, we determine that Arrasvuori qualifies as prior art under 35 U.S.C. § 102(a) because Arrasvuori’s publication date of October 11, 2007, is before the earliest possible effective filing date of the challenged claims, which is March 3, 2008, and under § 102(e) because Arrasvuori’s filing date of March 29, 2006, is before the earliest possible effective filing date of the challenged claims (March 3, 2008). Ex. 1001, codes (22), (60), (63); Ex. 1005, code (22), (43).” slip op. at 18

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

    “Arrasvuori discloses (a) “[m]onitoring” of “users performing real- world fitness tasks” (Ex. 1005 ¶ 38), using (b) “monitoring equipment . . . integrated into . . . wireless nodes and/or other computers of users, and/or [] attached to bodies of users” (id. at ¶ 39 (emphasis added)), where (c) “[u]sers might . . . wear their wireless nodes and/or other computers” (id. (emphasis added)), and where (d) “[t]he phrase[] ‘computer’ . . . refer[s] but [is] not limited to . . . a computerized watch” (id. at ¶ 90 (emphasis added); see id. at ¶ 40 (disclosing that “employed monitoring equipment might include one or more sensors”)). We find that these descriptions in Arrasvuori provide an anticipatory disclosure, particularly to the skilled artisan, of the limitation “wirelessly-connected sensor worn on an appendage of a first user.” See Ex. 1017 ¶ 45; Ex. 2006, 84:10-85:22. Although Arrasvuori does not recite in a single sentence the substance of disclosures (a) through (d) above, such as explicitly stating that its “wireless node is a computerized watch,” this is not necessary for the skilled artisan to understand that Arrasvuori discloses such a feature. See In re Bond, 910 F.2d at 832–33 (anticipation “is not an ‘ipsissimis verbis’ test”). Moreover, as argued by Petitioner, Arrasvuori’s disclosure of sensors “attached to bodies of users” and of users “wear[ing]” sensors itself discloses the subject limitation as broadly recited, even without considering the additional disclosure of a computerized watch. See Pet. Reply 17 (“Arrasvuori teaches wrist-worn sensors by stating that its users can ‘wear their wireless nodes and/or other computers.’” (citing Ex. 1005 ¶39)).” slip op. at 21

  Patent outcomesUS 9,278,256 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,278,256
• Whitewater West Industries, Ltd. v. American Wave Machines, Inc.Some claims unpatentable
  PTAB · Nov 20, 2023 · IPR2022-01033 · APJ Carl M Defranco · IPR · Final written decision

  Claims 1, 2, 7, 9–11, and 16–18 are unpatentable as obvious over McFarland and Chutter; claims 3–6, 8, and 12–15 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “pools would have “knowledge and familiarity with: (i) design of mechanical structures and (ii) fluid characteristics and the interaction of fluid forces upon mechanical structures,” and that this knowledge “could be obtained by: (i) successfully completing a Master’s degree in Mechanical Engineering or (ii) at least 5 years of experience in a job working with control systems, including designing or implementing such wave generation machines.” Pet. 15–16 (citing Ex. 1009 ¶¶ 36–37). AWM does not contest that assertion. See PO Resp. 2 (“it will be assumed that a PHOSITA has a background and the level of skill described in Petitioner’s definition”). We see no reason to deviate from WhiteWater’s proffered level of skill in the art. Thus, we adopt WhiteWater’s definition of the level of skill in the art.” slip op. at 8

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

    “We need not expressly construe the disputed “controller” limitation because, as discussed below, WhiteWater prevails in its challenge of claims 1, 11, and 16, even assuming AWM’s proposed construction is correct. 2. “the delay . . . is a fraction of the chamber period” AWM construes this claim limitation to mean that the delay is “a portion of the whole chamber period,” in other words, a time period “less than the whole chamber period.” PO Resp. 6–7. WhiteWater, in turn, contends that the term “fraction” is not limited to “something ‘less than a whole’” and can be represented simply as a “quotient of two numbers.” Pet. Reply 5. We need not expressly construe term “fraction” as used in this claim limitation because, as discussed below, WhiteWater fails in its challenge of claims 3, 8, and 12, even assuming its proposed construction is correct.” slip op. at 9

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

    “chamber 11 includes “operating device 30” and “flow control devices 17, 19.” Ex. 1005, 3:11-16, 3:43–45. According to Chutter, each chamber 11 “has similar mechanisms and the bank of chambers can be operated in any desired rhythm or sequence by a controller 40 coupled to each of operating devices 30 so that the pool can be provided with recreational waves of any desired pattern.” Id. at 4:3–13 (emphasis added). The pattern of waves “may be varied, as is well known, according to the sequencing at which pressurized air is delivered to the plurality of chambers.” Id. at 2:55–58 (emphasis added). Notably, Chutter teaches that central controller 40 is “arranged to control the rhythm or pattern of the several operating means so that, for example, all operating means” are actuated either “simultaneously” to create an “essentially linear” wave effect, or “sequentially” to create a “curved” or “non-orthogonal” wave effect. Id. at 2:12–39 (emphasis added); see also id. at 2:58–59 (“Adjacent chambers may be air pressurized alternately or simultaneously.”). Consistent with that disclosure, Chutter depicts controller 40 with multiple “connection” arrows to also indicate that a single, common controller controls the valve structure8 in multiple of Chutter’s wave-generating chambers 11. See id. at Fig. 1. Based on Chutter’s disclosures as a whole, we find that Chutter’s central controller 40 exemplifies a well-known and conventional controller 8 During the oral hearing, AWM’s counsel conceded that the term “valve structure,” as used in the claims, means not only “a set of valves,” but also “additional structure,” such as the means “to operate those valves” or “the actuator for the valves.” Hrg. Tr. 33:1–17. As such, we view Chutter’s operating means 30 and flow control devices 17 and 19 as corresponding to the claimed “valve structure.” capable of being connected to the valve structure in each of a series of wavegenerating chambers so as to actuate the valve structures in a sequential and delayed fashion to create a surf-simulating wave in a pool. See Ex. 1009 ¶ 162; Ex. 1016 ¶¶ 129–130. With that in mind, we further find that one skilled in the art would have looked to Chutter to reprogram or modify McFarland’s controller to operate in the same manner as Chutter’s controller so that McFarland’s controller was also capable of actuating the wave-generating chambers in a sequential and delayed fashion, as required by independent claims 1, 11, and 16. See Ex. 1009 ¶¶ 163–164; Ex. 1016 ¶¶ 131–133. Indeed, both McFarland and Chutter seek to create desirable surf waves and have similar wave-generating structures, such as a bank of chambers at one end of a pool and a controller for actuating a valve structure in each chamber to release water from the chamber into the pool. See Ex. 1009 ¶ 163; Ex. 1016 ¶ 131.” slip op. at 14

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

    “As discussed above, WhiteWater persuasively shows that the combination of McFarland and Chutter teaches or suggests the disputed “controller” limitations of independent claims 1, 11, and 16, in particular, limitations 1.C, 1.D, 1.D.1, 11.C, 11.D, 11.D.1, 16.C, and 16.D.1. AWM does not otherwise dispute WhiteWater’s showing of how the asserted combination teaches the remaining limitations of the independent claims. See PO Resp. 44, 49, 53, 62 (identifying claim elements 1.C, 1.D, 1.D.1, 11.C, 11.D, 11.D.1, 16.C, and 16.D.1 as being absent from the asserted combination). Nor does AWM dispute WhiteWater’s showing that the asserted combination teaches the limitations of dependent claims 2, 7, 9, 10, 17, and 18, contending only that they are “distinguishable over McFarland and Chutter for at least the same reasons previously explained” with respect to claims 1, 11, and 16. Based on our review, we find that the record fully supports WhiteWater’s showing that the asserted combination teaches or suggests all the limitations of claims 1, 11, and 16, as well as the limitations of dependent claims 2, 7, 9, 10, 17, and 18. See Pet. 58–63. In sum, after weighing all relevant factual findings, including the level of ordinary skill in the art, the scope and content of McFarland and Chutter, and any differences between their combined teachings and the claimed invention,9 we conclude that WhiteWater demonstrates, by a preponderance of the evidence, that claims 1, 2, 7, 9–11, and 16–18 of the ’966 patent are unpatentable as obvious over McFarland and Chutter. Having determined those claims to be unpatentable, we do not address whether they are also unpatentable under WhiteWater’s alternative theories based on McFarland alone and Chutter alone. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359 (2018) (holding that petitioner “is entitled to a final written decision addressing all of the claims it has challenged”); Boston Sci. Scimed, Inc. v. Cook Grp. Inc., 809 F. App’x 984, 990 (Fed. Cir. 2020) (non-precedential) (recognizing that the “Board need not address issues that are not necessary to the resolution of the proceeding” and, thus, has “discretion to decline to decide additional instituted grounds once the petitioner has prevailed on all its challenged claims”).” slip op. at 17

  Patent outcomesUS 8,434,966 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 8,434,966
• Chanel, Inc. v. Molo Design, Ltd.Some claims unpatentable
  PTAB · Aug 9, 2023 · IPR2022-00545 · APJ Carl M Defranco · IPR · Final written decision

  Claims 19–25 and 27 are unpatentable as obvious over MacAllen with the cited references; claims 1–10, 12, 14, and 18 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Chanel argues, with support from its declarant, Mr. Rake, that one skilled in the art during the relevant time frame “would have a bachelor’s degree and at least two years of relevant experience working as an industrial designer, interior designer, furniture designer, architect, or other similar professional” and “would be knowledgeable regarding furniture design and/or the design of exhibit and display systems, and would have a general understanding of related manufacturing processes.” Pet. 21–22 (citing Ex. 1003 ¶¶ 42–46). Molo does not contest Chanel’s definition, and Mr. Rake agrees that it accurately reflects the level of skill in the art. See Pet. Reply 1 (“The parties agree on the POSITA and level of ordinary skill in the art.”); Ex. 2010 ¶ 34 (“I believe this is an accurate definition of a POSITA and 13 Although occasionally we may focus on Molo’s arguments, we do not shift the ultimate burden from Chanel. We focus on Molo’s arguments simply to identify issues in dispute, some of which we find unpersuasive in view of the record as a whole. have used this for my analysis.”). Because Chanel’s definition of the level of skill in the art appears reasonable and consistent with the ’161 patent and the prior art, we adopt it for purposes of our analysis.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed board ownDecided for petitioner

    “The meaning of “freestanding” set forth in our Institution Decision is consistent with the Specification and prosecution history of the ’161 patent. For instance, during prosecution, the applicants rebutted the Examiner’s finding that “supports are required for the structure to be freestanding” by representing that “the extended wall, which is the structure itself, is freestanding when the base of the wall is placed on the floor of a room” and is “without supports.” Ex. 1002 at 185, 190 (first emphasis added). Based on that representation—that the expanded structure is capable of standing on its own without additional supports that are not part of the structure itself— the Examiner allowed the claims. See id. at 192. The Specification also supports that the expanded structure is freestanding in the absence of additional supports due to foldable supports 14 and 16 being adhered to end panels 18d at opposite ends of the core so as to be part of the structure itself— An end panel 18d of the core is connected to respective ones of the supports 14 and 16 over its entire width. The supports 14 and 16 are made from a self-supporting material, typically a non woven felt material, which has a degree of flexibility but also has sufficient rigidity to resist collapse of the core 12. The supports 14 and 16 extend laterally beyond the core as indicated at 32 and are adhered to respective ones of the end panels 18d. * * * Once partially extended, the supports 14 and 16 may be folded along a vertical axis to provide enhanced rigidity at each end of the partition 12. * * * [T]he supports 14, 16, at the free ends of the partition [are] folded upon themselves to provide stable support. Ex. 1001, 4:50–61, 5:12–14, 5:57–59. With that intrinsic evidence in mind, we maintain the construction in our Institution Decision that the term “freestanding” means “standing alone free of support or attachment.”” slip op. at 10

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “We disagree on both counts. Chanel’s justification for folding the end panels of SoftHousing I into tubular supports finds absolutely no support in the record, and instead, amounts to impermissible hindsight. More specifically, Chanel’s first justification—“functional reasons”—most certainly is derived from the ’161 patent itself, which states unequivocally that “supports 14 and 16 may be folded along a vertical axis to provide enhanced rigidity at each end of the partition 12.” Ex. 1001, 5:12–14. Nowhere does Chanel or its declarant, Mr. Rake, point us to any teaching in SoftHousing I or other prior art indicating that folding the end panels of a honeycomb-like structure into tubular supports was known to enhance its structural integrity. Instead, Chanel’s sole evidence for modifying SoftHousing I, be it for functional or aesthetic reasons, is the unsupported and conclusory opinion testimony of Mr. Rake. See Pet. 40–41 (citing Ex. 1003 ¶¶ 134–137). But nowhere does Mr. Rake provide any evidentiary support for his conclusions. Instead, he simply opines generally on the limits of folding paper effectively—“[T]here’s kind of a limit to how you can manipulate paper effectively, and one of the things you do is fold it. That’s, like, first off. Take a piece of paper, it has no structure, no strength, and you put a fold in it, and you can probably stand it on a – on a desk.” Ex. 2011, 200:3–14. But that testimony says nothing about folding paper into a tubular shape, let alone folding end panels of a honeycomb structure into a tubular shape. As such, we reject the notion that Mr. Rake’s testimony provides credible support for modifying the paper-like end panels of SoftHousing I into tubular supports.” slip op. at 23

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

    “Unlike SoftHousing I, Okuno discloses rigid supports—namely, “substrates 1, 1”—for a honeycomb structure. See Ex. 1011 at 2, Fig. 1. However, Chanel fails to explain why one skilled in the art would have looked to Okuno’s lampshade to modify a partition wall as disclosed in SoftHousing I. Although Chanel states that both are constructed of honeycomb structures, so too are many other objects, including beehives, window shades, collapsible containers, and expandable benches, chairs, and tables. See Ex. 1003 ¶ 55. So, it was incumbent on Chanel to state a more compelling reason for combining the teachings of SoftHousing I and Okuno than simply they share a common material, i.e., a honeycomb-like core. Indeed, conspicuously absent from Chanel’s evidence is any testimony from Chanel’s declarant, Mr. Rake, regarding a reason to combine Okuno with SoftHousing I. See Ex. 1003 ¶ 141 (relying solely on SoftHousing I for teaching the subject matter of claims 12 and 14); see also Pet. 43–44 (lacking citation to Mr. Rake’s declaration). Without more, we are not persuaded that Chanel articulates sufficient reasoning with rational underpinning for combining Okuno’s teachings with SoftHousing I. Thus, we determine that Chanel fails to demonstrate that dependent claims 12 and 14 would have been obvious over SoftHousing I and Okuno.” slip op. at 25

  Patent outcomesUS 9,689,161 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 9,689,161
• Samsung Electronics Co., Ltd v. Uusi, LLC D/B/A NartronSome claims unpatentable
  PTAB · Sep 17, 2020 · IPR2016-00908 · APJ Kamran Jivani · IPR · Remand

  Claims 40, 41, 43, 45, 47, 48, 61–67, 69, 83–86, 88, 90, 91, 94, 96, 97, 99, 101, and 102 are unpatentable as obvious; claims 37–39 were not shown unpatentable.

  RulingsRemand decision

  • RemandOther

    “Appeals for the Federal Circuit, which vacated our Decision and remanded the matter to us. Samsung Elecs. Co. v. UUSI, LLC, 775 F. App’x 692 (Fed. Cir. 2019). As to the earlier instituted claims, the Court instructed that we should consider “whether Samsung has shown that there would have been a reasonable expectation of success in combining the teaching of Gerpheide with the teachings of Ingraham [I]/Caldwell to arrive at the claimed invention.” Id. at 697. The Court further instructed us to “consider the patentability of claims 37, 38, and 39” (id.) because, on April 24, 2018, the Supreme Court of the United States held that a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018). Pursuant to the Federal Circuit’s instruction in this case and in light of SAS Inst., Inc., we modified our Decision on Institution to institute review of claims 37–39 of the ’183 patent as obvious over Ingraham I, Caldwell, and Gerpheide. Paper 40. We further held a teleconference on August 15, 2019, with respective counsel for the parties, to hear their proposals on how to proceed with this trial. Paper 41, 2. Having considered the parties’ proposals, we authorized the parties to submit concurrent briefs and subsequent responses addressing the following issues (id. at 6):” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “contends that a person having ordinary skill in the art at the time of the invention would have had a minimum of: (1) a bachelor’s degree in electrical engineering, or equivalent thereof; and (2) “two to three years of experience in the relevant field, which includes touch systems technology.” Pet. 3 (citing Ex. 1002 ¶ 19). Patent Owner’s witness, Dr. Cairns, opines that a person of ordinary skill “in the art of capacitive touch sensors would have had at least a bachelor’s degree in physics or electrical engineering or equivalent industry experience in the field.” Ex. 2002 ¶ 14. In our Final Written Decision, we noted that the levels of ordinary skill proposed by the parties do not differ significantly, but adopted Petitioner’s proposed definition as more representative, indicating that our analysis would be the same under either definition. Paper 35, 9–10. On remand, neither party disputes the definition adopted in the Final Written Decision. Furthermore, no argument presented by the parties on remand would be affected by adopting one of the proposed definitions over the other. We maintain here the definition adopted in the Final Written Decision.” slip op. at 14

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

    “transition term[s]” should be considered in determining the meaning of a claim term, but asserts without further support that the presence of a semicolon after “supply voltage” and the use of the transition term “wherein” do not compel the preliminary construction. Id. As we addressed in denying Petitioner’s Request for Rehearing, claim 37 employs the open-ended transition term “comprising” followed by a colon to indicate that a list elements follows, and employs semicolons to separate the elements of that list. Paper 17, 5. The first element of the list, element 37a, describes an oscillator and includes the supply voltage limitation preceded by a comma and the transition term “wherein.” Id. Element 37a then ends with a semicolon and the claim proceeds to element 37b, which recites a microcontroller. Id. Petitioner thus nominally acknowledges consideration of punctuation, but advances a construction that asks us to disregard punctuation affirmatively recited in the claim. To do so would be “inconsistent with the punctuation [patentee] chose for this claim.” In re Pelz, 379 F. App’x 975, 978 (Fed. Cir. 2010). Likewise, as to Petitioner’s assertion that we read an additional limitation into the claim (Pet. Br. 10), we observe that, if the claim is limited to a particular exemplary embodiment, such a limitation results from the claim being drafted to cover only that embodiment. While we confirmed in the Decision on Institution that the use of the term supply voltage is consistent with its use in the Specification (Dec. on Inst. 9), the limitation of the claim to the oscillator is based on the language of the claim, not on definition or disavowal. Therefore, even accepting, for the sake of argument, that there is no disavowal or definition in the Specification of “supply voltage,” the term refers in independent claim 37 to supply voltage of the oscillator.” slip op. at 18

  • Expert testimonyOther

    “We disagree with Patent Owner’s arguments because they are not responsive to the combination of teachings at issue in the references before us. Patent Owner focuses on particular features of Gerpheide that it alleges either “would not work . . . in the proposed Caldwell-Ingraham system” or “can only work” in the presence of a component Patent Owner argues that “neither Ingraham nor Caldwell uses.” PO Br. 1–2, 12–13. These arguments are based on a mistaken premise that one or more components or physical configurations of Gerpheide must be incorporated into the combination of Ingraham I and Caldwell in order to show a reasonable likelihood of success. Under the Federal Circuit’s construction of the “selectively providing” limitation, the combination of Ingraham I, Caldwell, and Gerpheide need not incorporate the specific features of Gerpheide identified by Patent Owner. Petitioner asserts, supported by evidence from Dr. Subramanian, that the Ingraham I-Caldwell combination would have been modified based on Gerpheide “to provide features that adjust[] the oscillator signal frequency provided to the input portions 13 to negate the effect of interference on the input portions 13 and touch sensing circuits.” Pet. 26–27. This modification would not require any of the particular components or configurations of Gerpheide highlighted by Patent Owner. Thus, even if one or more of Patent Owner’s arguments as to the infeasibility of incorporating particular aspects of Gerpheide were correct, Patent Owner’s arguments do not address Gerpheide’s particular teaching of adjusting oscillator signal frequency to negate the effect of interference, and therefore, Patent Owner’s arguments are not responsive to the proposed combination and evidence relied upon by Petitioner. In view of the above, we find that Petitioner has shown that the skilled artisan would have combined Gerpheide with Ingraham/Caldwell as proposed with a reasonable expectation of success in achieving the claimed subject matter.” slip op. at 26

  Patent outcomesUS 5,796,183 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 5,796,183
• Coastal Industries, Inc. v. Shower Enclosures America, Inc.Some claims unpatentable
  PTAB · Nov 19, 2018 · IPR2017-00573 · APJ Michael W Kim · IPR · Final written decision

  Claims 1–3, 5, 7–9, 11–14, and 16–26 are unpatentable; claims 4, 6, 10, and 15 are not shown unpatentable. Substitute claims 33 and 34 are granted.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “invention. Pet. 26. Patent Owner sets forth many assertions related to the level of ordinary skill in the art at the time of the invention. PO Resp. 3–14, 20–30; PO Supp. Resp. 15–20. Petitioner responds to those assertions. Pet. Reply 2–4, 9–18; Pet. Supp. Reply 15–16. While we will address each of those assertions, as a substantive matter, Petitioner asserts that “PO does not dispute the definition of a PHOSITA, offer a contrary definition, explain how a different definition might affect the Board’s analysis, nor contest the Board’s specific interpretation of the prior art references to put the PHOSITA determination at issue.” Pet. Reply 16–18; Pet. Supp. Reply 15– 16. We agree with that assessment. Moreover, we note that the level of ordinary skill in the art is often 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). Accordingly, as an initial matter, we address Petitioner’s unopposed substantive assertion with respect to the level of ordinary skill in the art at the time of the invention.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “1. “track members” Independent claims 1, 12, 19, and 22 each recite “track members.”” slip op. at 28

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “B. Patentability of Substitute Claims 33 and 34 Petitioner asserts that various claim limitations are disclosed in the” slip op. at 100

  • ExcludeMotion to exclude, deniedDenied

    “701, 702 and 37 C.F.R. § 42.65(a). Specifically, Patent Owner asserts that Mr. Poenariu’s testimony is entirely based on his finding as to the level of ordinary skill in the art, and because Mr. Poenariu did not articulate a sufficient factual basis for his conclusion as to the level of ordinary skill in the art, his entire testimony us unreliable and should be excluded. PO Mot. 5–6. Petitioner responds that Mr. Poenariu discloses more than a sufficient amount of underlying facts on which to base his testimony, and, thus, Patent Owner’s assertions go to weight and not admissibility. Pet. Opp. 6–9. We agree with Petitioner.” slip op. at 105

  Patent outcomesUS 7,174,944 mixed
  Claim constructioncites Phillips · KSR
  Patents in suitUS 7,174,944
• Resmed Limited / Resmed Inc. et al. v. Fisher & Paykel Healthcare LimitedSome claims unpatentable
  PTAB · Mar 8, 2018 · IPR2016-01716 · APJ Carl M Defranco · IPR · Final written decision

  Claim 7 is unpatentable as obvious over Netzer and Levine; ResMed did not prove claim 11 unpatentable over Netzer and Bahr.

  RulingsFinal written decision

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

    “We disagree with FPH that the term “urges” requires a pressing force that results from an angled slide-on direction for the water chamber. Rather, we understand FPH’s reference to the angled slide-on direction as applying only to “other configurations of the present invention,” and not to “preferred embodiments” where the slide-on direction for the water chamber is clearly horizontal, as shown in Figure 1 and required by “slot 17” in “chamber receiving bay 47.” Compare Ex. 1002, 8:10–13 (“other configurations” having angled slide-on motion for water chamber), with id. at 4:19–46 (“preferred embodiments” having horizontal slide-on motion for water chamber). Nowhere does the specification of the ’072 patent suggest that the horizontal slide-on motion for the preferred embodiments applies an additional bias or other pressing force to the water chamber. As such, we do not find that the specification supports a definition of “urges” that differs from its plain and ordinary meaning, which Merriam-Webster’s Dictionary defines as “to force or impel in an indicated direction or into motion.” Ex. 1031, 4.” slip op. at 7

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

    “Based on our interpretation of the claim 7 limitation “urges . . . in contact with,” we find that Netzer, when combined with Levine, satisfies this limitation. Specifically, we find that Netzer discloses the claimed “single motion” limitation by describing that the water chamber has “lateral guide profiles” and moves in “insertion direction (arrow E)” to engage with “corresponding guide grooves” in a chamber heater (Ex. 1008, 8, 10, Fig. 1), and Levine teaches the claimed “urges . . . in contact with” limitation by disclosing a conductive base of a water chamber that is “operationally engaged with” and “in operational alignment upon the heating surface” of a conventional heating unit for a humidifier (Ex. 1009, 2:48–51, 4:33–37). We further find that a skilled artisan would have combined these teachings in a manner that would result in Netzer’s horizontal slide-on chamber moving in a direction that “urges” a base of the water chamber “in contact with” a heater unit, as taught by Levine, in order “to implement the well-known and conventional means of applying heat to the base of a water container.” Ex. 1012 ¶¶ 78–80. Indeed, this combination “‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 417 (2007). Based on those findings, we conclude that claim 7 would have been obvious over the combination of Netzer and Levine. The record evidence fully supports that the combination of Netzer and Levine teaches all the limitations of claim 7 and that a skilled artisan would have combined those teachings in a manner resulting in the claimed invention. As such, we are persuaded that ResMed has demonstrated by a preponderance of the evidence that claim 7 is unpatentable as obvious over Netzer and Levine. C.” slip op. at 16

  Patent outcomesUS 8,550,072 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,550,072
• Resmed Limited / Resmed Inc., And Resmed Corp. v. Fisher & Paykel Healthcare LimitedSome claims unpatentable
  PTAB · Mar 7, 2018 · IPR2016-01727 · APJ Michael L Woods · IPR · Final written decision

  Claim 3 is unpatentable over HC200 and Netzer; claim 7 was not shown unpatentable over HC200, Netzer, and Bahr because the combination lacked a supported motivation to add electrical connections.

  RulingsFinal written decision

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

    “We agree with Mr. Virr’s testimony that “pressing is not . . . mentioned in the specification” (Ex. 1035 ¶ 7) and agree with Petitioner’s construction that “pressing is not required by the claims” (Pet. Reply 2). We do not agree with Patent Owner’s proposed construction for the following reasons.” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Nevertheless, based on our review of the ’624 patent, the types of problems and solutions described in the ’624 patent and applied prior art, and the testimony of Mr. Virr and Dr. Schneider, we adopt Petitioner’s asserted level of ordinary skill and find that a: person of ordinary skill in the art (“POSITA”) as of any of the claimed priority dates as early as March 2000 would have had a bachelor’s degree in mechanical engineering, biomedical engineering, or a related discipline, and at least five years of relevant product design experience in the field of medical devices or respiratory therapy, or an equivalent advanced education. Pet. 14 (citing Ex. 1012 ¶¶ 22–23). We also agree with Patent Owner that any differences in the parties’ proposed level of ordinary skill does not impact our analysis. See PO Resp. 14–15; see also Transcript at 47:11–14.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable

    “Further, Petitioner articulately reasons with rational underpinnings that a person of ordinary skill in the art would have modified “HC200 to move the patient outlet tube from the humidifier chamber to the housing, as taught by Netzer, so that the humidifier chamber could slide in and out of the housing without requiring the patient to disconnect the outlet tube and masked every time he needed to fill or clean the humidifier.” Pet. 25 (citing Ex. 1012 ¶ 74); In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418 (“rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). For the foregoing reasons, and as set forth in the Petition supported by the underlying evidence cited therein, we find that the combination of HC200 and Netzer satisfies the limitations of claim 3 and are persuaded that a preponderance of the evidence supports the conclusion that claim 3 is unpatentable over HC200 and Netzer.” slip op. at 24

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “CPAP machine would use “electrical components of the hose” (Ex. 1012 ¶ 86) or “a heater wire in the hose” (id. at ¶ 87), neither Petitioner nor Mr. Virr cites to any portion of HC200 or Netzer to support this assertion. See Pet. 16–19 (asserted teachings of HC200), 19–24 (asserted teachings of Netzer), 48–49; see also Ex. 1012 ¶¶ 49–57 (Mr. Virr’s testimony describing Netzer); see also id. at ¶¶ 58–62 (Mr. Virr’s testimony describing HC200). Petitioner also does not explain adequately how its proposed combination results in “any electrical components of the hose” (Pet. 48) or “a heater wire in the hose” (id. at 49) so that an electrical connection would be needed. Upon weighing Dr. Schneider’s testimony (Ex. 2004 ¶¶ 104–105) and Mr. Virr’s testimony (Ex. 1012 ¶¶ 86–87; Ex. 1035 ¶ 21), we are not persuaded that one of ordinary skill in the art would have added an “electrical component of the hose” or “heater wire in the hose” to the HC200/Netzer combination, much less Bahr’s electrical connections, as proposed by Petitioner. Bahr teaches contacts for “sensor 28, such as a solid state pressure transducer or a flow meter” (Ex. 1011 ¶ 20) “to provide a visible indication on a display 54 of monitored properties of the gas” (id. ¶ 24), or “detector 56 . . . in order to detect whether a sensor is connected” (id. ¶ 25). See also Ex. 2004 ¶ 104 (“Bahr teaches a detector attached to its electrical contacts to detect whether a sensor is connected”); PO Resp. 37 (stating the same in an argument why references would not be combined). Unlike Bahr, however, neither HC200 nor Netzer discloses a display for providing “monitored properties of the gas,” let alone a similar pressure transducer or flow meter for measuring such properties. Because HC200 indicates that the patient monitors if air is leaking around the mask visually (see Ex. 1017, 14), we are not persuaded that a POSITA would have added a separate electrical sensor to monitor air leakage, either. Turning to Netzer, although Netzer discloses a “spring-loaded electric switch” to turn off Netzer’s humidifier upon removal of its liquid chamber (Ex. 1008, 6), Netzer does not describe this switch as requiring any “electrical components of the hose” or “a heater wire in the hose.” Accordingly, we are not persuaded that one of ordinary skill in the art would have further modified Netzer and HC200 to include Bahr’s electrical connections, as Petitioner proposes, when doing so would needlessly add cost and complexity to the combined device. See Ex. 2004 ¶ 105. As such, Petitioner’s reasoning has insufficient rational underpinnings (KSR, 550 U.S. at 418), and Petitioner has failed to establish by a preponderance of the evidence that claim 7 is unpatentable over HC200, Netzer, and Bahr.” slip op. at 27

  Patent outcomesUS 7,111,624 mixed
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 7,111,624

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.