- Juniper Networks, Inc. / Ruckus Wireless, Inc. et al. v. Chrimar Systems, Inc.All claims unpatentablePTAB · Dec 29, 2017 · IPR2016-01397 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 1, 2, 7, 26, 29, 38, 39, 40, 47, 55, and 69 are unpatentable as obvious over the asserted prior art combinations.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner indicates that the only difference between the parties’ respective definitions of the level of ordinary skill in the art is that Petitioner uses the phrase “at least.” PO Resp. 10. According to Patent Owner, the phrase “at least” is “too open ended” and “would result in an expert, who has a Ph.D. and 15 years of experience, being considered an ordinary artisan.” Id. Patent Owner, however, does not identify any specific instance in which the difference between the parties’ respective definitions of the level of ordinary skill in the art impacts the analysis or conclusions of either party, or either party’s declarant, in this case. See id. Our findings and conclusions in this case would be the same under either party’s definition of the level of ordinary skill in the art. To the extent necessary, though, we adopt Patent Owner’s definition, which is supported by the declaration of Dr. Vijay K. Madisetti. Id.; Ex. 2038 ¶ 26. As such, we determine that a person of ordinary skill in the art would have had a B.S. degree (or equivalent) in electrical engineering or computer science and three years of experience in the design of network communications products, and would have been familiar with data communications protocols, data communications standards (and standards under development at the time, including the 802.3 standard), and the behavior of data communications products available on the market.” slip op. at 6
- Prior constructionPrior construction adoptedDecided for petitioner
“second pairs of contacts used to carry BaseT Ethernet communication signals.” Ex. 1001, 17:14–16. In a decision on institution in IPR2016- 01391, we construed the term “BaseT” in a related patent to mean “twisted pair Ethernet in accordance with the 10BASE-T or 100BASE-T standards.” Juniper Networks, Inc. v. Chrimar Systems, Inc., Case IPR2016-01391, slip op. at 11–12 (PTAB Dec. 22, 2016) (Paper 9). Our construction is consistent with Petitioner’s proposal that the term “BaseT” be construed to mean “10BASE-T and 100BASE-T.” Pet. 5. Our construction also is consistent with the construction adopted by the United States District Court for the Eastern District of Texas in a related case. Ex. 2021, 18. Further, Patent Owner “does not contest” our construction. PO Resp. 12. We note that our findings and conclusions in this case are not dependent on a particular construction of the term “BaseT.” Nonetheless, because neither party disputes our prior construction of that term, we adopt it in this case. Specifically, we construe the term “BaseT” in claim 1 to mean “twisted pair Ethernet in accordance with the 10Base-T or 100Base-T standards.”” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We agree with Petitioner that Patent Owner’s proposed construction is not the broadest reasonable interpretation. First, Patent Owner does not direct us to any intrinsic evidence to support its proposed construction, but instead relies on a single piece of extrinsic evidence. PO Resp. 12–13. Specifically, Patent Owner cites to a document that discusses the term “protocol” in the context of explaining how “networks that make up the Internet” communicate with one another. Ex. 2047, 1. That, however, is not the context in which the term “protocol” is used in the ’838 patent. For example, the ’838 patent relates to tracking electronic equipment in an Ethernet network. Ex. 1001, 1:27–30, 17:13–23. As a result, we are not persuaded that the extrinsic evidence cited by Patent Owner establishes the meaning of the term “protocol” in the context of the ’838 patent. Second, Patent Owner’s proposed construction addresses the term “protocol” in isolation from the remainder of the claim language. By limiting the term “protocol” to a mutually agreed upon method of communication, Patent Owner’s proposed construction appears to require a communication protocol. Claim 2, though, recites a detection protocol, not a communication protocol. Id. at 17:24–26. Claim 2 further specifies that the detection protocol is based on different magnitudes of DC current flow detected by the central piece of network equipment via Ethernet contacts. Id. at 17:13–26. Patent Owner does not explain specifically why the central piece of network equipment must mutually agree upon a method of communication with other network equipment in order to detect different magnitudes of DC current flow. See PO Resp. 12–13; Pet. Reply 26–27. Third, the specification of the ’838 patent indicates that the detection protocol does not require a mutually agreed upon method of communication. For example, the ’838 patent describes one embodiment as follows: The existence of a connection between hub 1 and central module 15a is monitored by test voltage source 64 and test voltage monitor 66 through a pair of receive data lines. Current from test voltage source 64 flows through a data line to an isolation transformer within hub 1. The current flows through the primary winding of the isolation transformer and returns on the other receive data line to the test voltage monitor 66. An interruption in the flow of current is detected by the test voltage monitor 66. . . . Similarly, current sourced onto a transmit line from signal modulator 7 and isolation power supply 8 through remote module 16a to the isolation transformer of PC 3A which returns on the other transmit line is monitored by test voltage monitor 84” slip op. at 8
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“phantom power circuit would have degraded the Ethernet data signal is not persuasive. Patent Owner’s declarant, Dr. Madisetti, states that “[s]witching the resistor would create noise that would degrade the Ethernet data propagation and reduce bandwidth,” but does not otherwise explain or provide support for that statement. Ex. 2038 ¶ 86. In contrast, Petitioner’s declarant, Mr. Crayford, explains that the resistor in Bloch would have produced low frequency signals, which would have been unlikely to interfere with the higher frequency data signals of an Ethernet network. Pet. Reply 11; Ex. 1046 ¶¶ 49–51. Mr. Crayford also explains that even if the resistor in Bloch would have caused some interference with the Ethernet data signals, it would have been within the knowledge and capabilities of a person of ordinary skill in the art to separate the low frequency resistor signals from the high frequency Ethernet data signals, such as by using a filter. Pet. Reply 11; Ex. 1046 ¶ 49; Ex. 2039, 172:20–173:3. Patent Owner’s argument that applying operating power to the transformers in Bloch would saturate the coils also is not persuasive. Patent Owner’s argument is premised on annotations that Petitioner added to Figure 1 of Bloch in the Petition. PO Resp. 27 (citing Pet. 44). Specifically, Petitioner added a red line to Figure 1 of Bloch to indicate the flow of DC current through the system, but, as Patent Owner points out, the red line only shows current flowing through one side of the transformer. Pet. 44; PO Resp. 27. Petitioner’s declarant, Mr. Crayford, clarified during his deposition that the annotations to Figure 1 were intended to illustrate the direction of current flow, and that, even if not shown expressly by the annotations, the current clearly flows through both sides of the transformer. Ex. 2039, 167:14–169:22. Specifically, Mr. Crayford stated that “I did not choose to highlight both of the pairs of the twisted pair which is the current path, but clearly they’re parallel connectors connected to the same transformers with the power and return path on the center tap,” so “they probably should be highlighted.” Id. at 167:23–168:4. Thus, contrary to Patent Owner’s argument, Petitioner does not propose applying operating power to just one side of the transformers in Bloch. Further, we are not persuaded by Patent Owner’s argument that, even if operating power was applied to both sides of the transformer in Bloch, there would still be a saturation problem. Bloch teaches that the phantom power circuit “is connected to the two center taps of the transformers,” thereby indicating that applying operating power to the center taps of the transfomers would work. Ex. 1005, 3:9–23. Further, consistent with the teaching of Bloch, Mr. Crayford explained that the objective of balancing the coils on either side of the transformer is “very well known.” Ex. 2039, 169:14–22.” slip op. at 48
Patent outcomesUS 9,019,838 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,019,838 - PTAB · Dec 6, 2017 · IPR2016-00320 · APJ Karl D Easthom · IPR · Final written decision
Claims 8–10 are unpatentable based on the instituted obviousness grounds after the Board reconsidered the record on rehearing.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“be heard regarding the allegedly new circuits set forth in specific paragraphs of the Baker Reply Declaration. No more was required. Accordingly, Patent Owner’s Motion is denied. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1081 (Fed. Cir. 2015) (“With no Board denial of concrete, focused requests before us, we are not prepared to find that [the appellant] was denied a meaningful opportunity to respond.”)24; Opp. 15 (“Patent” slip op. at 68
- RehearingOther
“Subsequently, Patent Owner filed a Request for Rehearing. Paper 41 (“Rehearing Request” or “Reh’g Req.”). Based on the Rehearing Request, the Board withdrew the First Final Written Decision as set forth in the Decision on Rehearing. Paper 42 (Withdrawal of Final Written Decision and Authorization of Sur-Reply) (“Rehearing Decision” or “Reh’g Dec.”). As set forth in the Rehearing Decision, we granted Patent Owner’s request for additional briefing in the form of a Sur-Reply (Paper 43). See Reh’g Dec. 5–6; Sur-Reply.” slip op. at 2
NonePatents in suitUS 6,169,503 - Facebook, Inc. / Instagram, LLC v. Skky, LLCRehearing deniedPTAB · Nov 27, 2017 · CBM2017-00002 · APJ William V Saindon · CBM · Rehearing
The Board denied rehearing, finding no abuse of discretion in denying CBM institution because the patent, after disclaimer, lacked a claim requiring financial activity.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party requesting rehearing bears the burden of showing an abuse of discretion, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 3
- Adverse judgmentAdverse judgmentOther
“CBM patent review of claims 1–14 of the ’870 patent under Section 18 of the Leahy-Smith America Invents Act, Pub. L. No. 112–29, 125 Stat. 284, 329 (2011) (“AIA”). Patent Owner, Skky, LLC, filed a Preliminary Response. Paper 8 (“Prelim. Resp.”). With its Preliminary Response, Patent Owner provided evidence (Ex. 2001) that it filed with the Office a statutory disclaimer of claims 1–7 and 9 of the ’870 patent pursuant to 37 C.F.R. § 1.321(a). Prelim. Resp. 2 (citing Ex. 2001). After the Preliminary Response, Petitioner filed a Preliminary Reply to Patent Owner’s Preliminary Response, as authorized by the panel pursuant an e-mail request by Petitioner, to address the consequences of Patent Owner’s disclaimer of claims 1–7 and 9. Paper 9 (“Pet. Prelim. Reply”). In response to the” slip op. at 2
NonePatents in suitUS 9,203,870 - Facebook, Inc. / Instagram, LLC v. Skky, LLCRehearing deniedPTAB · Nov 9, 2017 · CBM2017-00003 · APJ Karl D Easthom · CBM · Rehearing
The Board denied Facebook and Instagram’s rehearing request, maintaining that the patent was ineligible for CBM review because no existing challenged claim required financial activity.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party requesting rehearing bears the burden of showing an abuse of discretion, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“only for a patent that is a covered business method patent.” (Emphasis added). A patent is eligible for CBM review if it has at least one claim directed to a covered business method. Transitional Program for Covered Business Method Patents—Definitions of Covered Business Method Patent and Technological Invention; Final Rule, 77 Fed. Reg. 48,734, 48,736 (Response to Comment 8).” slip op. at 4
- Adverse judgmentOther
“Pet.”) requesting covered business method (“CBM”) patent review of claims 1–7 of the ’810 patent under Section 18 of the Leahy-Smith America Invents Act, Pub. L. No. 112–29, 125 Stat. 284, 329 (2011) (“AIA”). Patent Owner, Skky, LLC, filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). With its Preliminary Response, Patent Owner provided evidence (Ex. 2001) that it filed with the Office a statutory disclaimer of claim 5 of the ’810 patent pursuant to 37 C.F.R. § 1.321(a). Prelim. Resp. 2 (citing Ex. 2001). After the Preliminary Response, Petitioner filed a Preliminary Reply to Patent Owner’s Preliminary Response, as authorized by the panel pursuant an e-mail request by Petitioner, to address the consequences of Patent Owner’s disclaimer of claim 5. Paper 7 (“Pet. Prelim. Reply”). In slip op. at 2
NonePatents in suitUS 9,219,810 - Facebook, Inc. / Instagram, LLC v. Skky, LLCRehearing deniedPTAB · Nov 9, 2017 · CBM2017-00006 · APJ Karl D Easthom · CBM · Rehearing
The Board denied rehearing and maintained its denial of CBM institution because, after the statutory disclaimers, no challenged claim required a financial activity.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“proceeding only for a patent that is a covered business method patent.” (Emphases added). In other words, the decision at the time of institution is based upon on what “is a covered business method patent,” id. (emphasis added), instead of what was “a covered business method patent” prior to the disclaimer. See also AIA § 18(d)(1) (using the present tense “claims”); 37 C.F.R. § 42.207(e) (when a patent owner files a statutory disclaimer, “[n]o post-grant review will be instituted based on disclaimed claims”). Petitioner’s proposed rule would require the Director to institute a CBM patent review “for a patent that is [not] a covered business method patent,” contrary to AIA § 18(a)(1)(E).” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“284 (2011) (“AIA”) created a transitional program for the Board to conduct post-grant reviews of a limited set of patents designated as “covered business method patents.” AIA § 18(a). The AIA defines a “covered business method patent” as “a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service.” Id. § 18(d)(1). Thus, in order to institute a CBM review proceeding, the statute requires a patent that claims a particular type of method or apparatus. See Secure Axcess, LLC v. PNC Bank Nat’l Ass’n, 848 F.3d 1370, 1381 (Fed. Cir. 2017) (“Necessarily, the statutory definition of a CBM patent requires that the patent have a claim that contains, however phrased, a financial activity element.” (emphasis added)); Unwired Planet, LLC v. Google Inc., 841 F.3d 1376, 1382 (Fed. Cir. 2016) (CBM patents “are limited to those with claims that are directed to methods and apparatuses of particular types and with particular uses ‘in the practice, administration, or management of a financial product or service’” (emphasis added)); Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir. 2016) (citing previous Board decisions that “properly focuse[d] on the claim language at issue” (emphasis added)). Under AIA § 18(a)(1)(E), “[t]he Director may institute a transitional proceeding only for a patent that is a covered business method patent.” (Emphases added). In other words, the decision at the time of institution is based upon on what “is a covered business method patent,” id. (emphasis added), instead of what was “a covered business method patent” prior to the disclaimer. See also AIA § 18(d)(1) (using the present tense “claims”); 37 C.F.R. § 42.207(e) (when a patent owner files a statutory disclaimer, “[n]o post-grant review will be instituted based on disclaimed claims”). Petitioner’s proposed rule would require the Director to institute a CBM patent review “for a patent that is [not] a covered business method patent,” contrary to AIA § 18(a)(1)(E).” slip op. at 5
NonePatents in suitUS 9,215,310 - Samsung Electronics Co. Ltd. / Samsung Electronics America, Inc. et al. v. Rosetta-Wireless CorporationRehearing deniedPTAB · Oct 20, 2017 · IPR2016-00622 · APJ John A Hudalla · IPR · Rehearing
The Board denied Rosetta’s rehearing request, finding it had not shown the Board overlooked or misapprehended its § 318(a) and constitutional arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. See 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Not reached
“property right. Req. Reh’g 4–5. Thus, Rosetta contends “[i]nter partes review is an adjudicatory proceeding which, as in this case, may result in extinguishment of a patentee’s property rights by action of the Board and without the right to trial by jury.” Id. at 3. According to Rosetta, this violates the Seventh Amendment and Article III of the Constitution. Id. Rosetta cites to a pending case before the U.S. Supreme Court that has taken up this issue. Id. (citing Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 137 S. Ct. 2239 (2017)). Accordingly, Rosetta asks us to vacate our Final Written Decision. Id. at 6. Rosetta never made arguments during trial about the purported unconstitutionality of inter partes review. Nor does Rosetta’s request for rehearing attempt to identify such arguments in the trial record. As such, we could not have misapprehended or overlooked this issue.” slip op. at 4
NonePatents in suitUS 7,149,511 - Apple Inc. v. Personalized Media Communications, LLCAll claims unpatentablePTAB · Sep 19, 2017 · IPR2016-00755 · APJ Karl D Easthom · IPR · Final written decision
Claims 13–15, 17, 18, 20, 21, 23, 24, 26, 27, and 30 are unpatentable; the contingent motion to amend is denied because the substitute claims are unpatentable.
RulingsFinal written decision- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“B. Priority The prior art status of all the asserted references in this trial hinges on the effective filing date for the ’091 patent with respect to support for the challenged claims. Petitioner contends that the earliest effective filing date for challenged claims of the ’091 patent is September 11, 1987 (through a series of continuation patents). See Pet. 2–3. The ’091 patent effectively claims CIP status from September 11, 1987 to a chain of continuing applications purportedly having an effective filing date of November 3, 1981––the filing date of the earliest-filed ancestor patent in the chain, the ’490 patent. See Ex. 1003, [63]. Patent Owner contends that the effective filing date of the ’091 patent is November 3, 1981, the filing date of the ’490 patent. Prelim. Resp. 8; PO Resp. 25. After a teleconference requested by Petitioner prior to institution, the panel authorized the parties to file supplemental briefing on this issue. See Ex. 1041 (Teleconference Transcript); Pet. Prelim. Reply; PO Sur-Reply. Citing Bradford Co. v. Conteyor N. Am., Inc., 603 F.3d 1262 (Fed. Cir. 2010), Petitioner relies on estoppel, contending that Patent Owner disclaimed priority to the filing date of the ’490 patent during prosecution after a double patenting rejection by the Examiner.10 See Pet. Prelim. Reply 6–7. Petitioner also relies on PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306, 1311 (Fed. Cir. 2008), contending that Patent Owner broadened the scope of the claim term “programming” in the 1987 application that led to the ’091 patent, relative to the scope of the term as disclosed in the ancestor 1981 ’490 patent specification.11 Id. In addition, Petitioner contends that the 1981 ’490 patent specification does not provide sufficient disclosure to support specific claim elements as recited in challenged claims of the ’091 patent. Id. at 7. Patent Owner disagrees with each of these theories, as discussed further below. As an initial matter, Patent Owner initially argues (in its PO Sur- Reply) that the Petition fails to make “a prima facie case” that the ’490 patent does not support the challenged claims that issued in the CIP ’091 patent. PO Sur-Reply 1 (emphasis omitted). Patent Owner does not make this argument in its Response. Rather, in its Response, Patent Owner only argues that “[a]t least claims 13–16, and 18 (‘the 1981 Claims’) are entitled to the priority date of November 3, 1981.” PO Resp. 25. Accordingly, Patent Owner waives any argument 1) that the Petition fails to shift the burden of production to Patent Owner on the issue of priority with respect to “the 1981 Claims” (i.e., claims 13–16 and 18; PO Resp. 25) and 2) that” slip op. at 49
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“equitable tool for determining the permissible scope of patent claims.” Builders Concrete, Inc. v. Bremerton Concrete Prods. Co., 757 F.2d 255, 258 (Fed. Cir. 1985). Because the prosecution history does not reveal a clear disavowal of claim scope in context of the disputed phrases in the challenged claims as a whole, under a broadest reasonable construction, the public should not be bound via a doctrine of equity to a construction that would render the claims superfluous and contradict the meaning of decrypting and programming as described in the patents by stripping their breadth to all-digital applications. See Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973 (Fed. Cir. 2014) (The court “observes that the PTO is under no obligation to accept a claim construction proffered as a prosecution history disclaimer.” (Emphasis added)). Accordingly, contrary to Patent Owner’s arguments, no disclaimer attaches to support Patent Owner’s claim” slip op. at 41
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“claims 14, 15, 18, and 24. See PO Resp. 55 (relying on arguments with respect to “several elements of claims 13 and 20”), 44–55 (presenting arguments for claims 13, 20, 15, and 23). The burden, however, remains on Petitioner to demonstrate unpatentability. See Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). As discussed above, after reviewing the Petition, supporting evidence, and the other briefs, and based on the record, we find that Gilhousen discloses each limitation of the challenged claims. See Pet. 16–29 (citing Ex. 1001; Ex. 1004). Accordingly, in light of the foregoing, we determine Petitioner has shown by a preponderance of evidence that Gilhousen anticipates claims 13– 15, 18, 20, 23, and 24.” slip op. at 95
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“2. Secondary Considerations As Petitioner argues, Patent Owner fails to show a nexus to its alleged” slip op. at 114
Patent outcomesUS 8,191,091 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,191,091 - General Electric Co. v. University Of Virginia Patent FoundationRehearing deniedPTAB · Sep 19, 2017 · IPR2016-00357 · APJ J John Lee · IPR · Rehearing
The Board denied the Patent Owner’s rehearing request, leaving in place the final written decision holding all challenged claims unpatentable under § 102(b) and/or § 103(a).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“DISCUSSION A party requesting rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it contends were misapprehended or overlooked by the Board. Id.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDecided for petitioner
“The Final Written Decision acknowledged the disclosure in the ’182 Application of the objective of lengthening usable echo train durations while achieving desired image contrast characteristics. Final Dec. 22 (citing Ex. 1014, 4). We concluded this disclosure was similar to the disclosure of the key feature in Purdue Pharma. Id. (citing Purdue Pharma, 230 F.3d at 1327). UVAPF disputes that conclusion, arguing that the comparison with Purdue Pharma is not “meaningful,” because we purportedly overlooked the importance of lengthening the usable echo train duration while achieving comparable image contrast, and the relationship between this “primary objective” and the echo time ratio. Req. Reh’g 8–9. The Final Written Decision, however, specifically considered this “primary objective” described in the ’182 Application—including both the echo train duration and image contrast aspects. Final Dec. 22. We further concluded the alleged relationship between that key feature and the echo time ratio, which is not described in the ’182 Application, was insufficient to direct a skilled artisan to the recited echo time ratio limitations. Id. As we explained, the patent in Purdue Pharma similarly described a key feature and claimed a particular ratio related to that feature, but the court held the written description was inadequate because it failed to describe that ratio or ascribe any particular importance to that ratio. Id. at 20–22 (citing Purdue Pharma, 230 F.3d at 1326–28). The same is true of the claimed echo time ratio and the disclosure of the ’182 Application, which does not identify any such ratio much less describe its significance. Id. UVAPF has not identified any argument or evidence we have overlooked, nor has UVAPF shown our application of Purdue Pharma was erroneous.” slip op. at 5
- Strike new argumentNew argument consideredDecided for petitioner
“not have been considered because they were untimely. Req. Reh’g 9–11. GE did not cite the Purdue Pharma case until the Petitioner Reply. See Paper 27, 13–14. We disagree that GE’s arguments were untimely, however, because Purdue Pharma was cited to rebut arguments made by UVAPF in its Patent Owner Response. In the Patent Owner Response, UVAPF argued that a person of ordinary skill would have been able to derive the full range recited for the echo time ratio limitations based on an example provided in the ’182 Application. Paper 21, 55–58. GE argued in the Petitioner Reply that UVAPF’s position is precluded by Purdue Pharma, which held that whether a claimed ratio can be derived from the written description is immaterial if the disclosure does not describe the ratio or direct a person of ordinary skill to the ratio as a part of the invention. Paper 27, 13–14 (citing Purdue Pharma, 230 F.3d at 1328). Thus, Purdue Pharma was cited to respond directly to arguments made by UVAPF in its Patent Owner Response, and GE’s arguments based on Purdue Pharma were not untimely. In addition, UVAPF also contends GE untimely raised its arguments that the ’182 Application does not provide sufficient support for the “at least twice” aspect of the echo time ratio limitations. Req. Reh’g 11–13. To the contrary, GE argued in the Petition that the ’182 Application failed to adequately support the “at least twice” limitation. Pet. 11–12 (“[N]owhere does the ’182 application make a comparison of the [effective echo time] of a pulse sequence derived according to the disclosed method, much less delineate a range with a boundary of ‘at least twice’ that of any other echo time.”). Thus, GE’s arguments regarding the “at least twice” limitation were not untimely.” slip op. at 6
§ 112 disclosure - Smith & Nephew, Inc. v. Conformis, Inc.Institution deniedPTAB · Sep 12, 2017 · IPR2017-00984 · APJ James A Worth · IPR · Institution
The Board denied institution after finding no reasonable likelihood that claims 1–25, 28, 29, 32–46, and 50–64 were unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under [35 U.S.C. §] 311 and any response filed under [35 U.S.C. §] 313 shows that 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); see also 37 C.F.R. § 42.108. For the reasons set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood that claims 1–25, 28, 29, 32–46, and 50–64 are unpatentable. Accordingly, we do not institute an inter partes review of claims 1–25, 28, 29, 32–46, and 50–64 of the ’827 patent based on the grounds asserted in the petitions.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“As to “references the osteophyte,” Petitioner states that the ’827 patent does not define the term “reference,” but argues the broadest reasonable construction of the limitation includes “at least a patient-specific surface that engages or avoids an osteophyte.” Id. Patent Owner does not address this issue directly in this proceeding. For purposes of this Decision, we determine that the broadest reasonable construction of the “references the osteophyte” limitation includes a patient specific surface that “engages or avoids the osteophyte,” consistent with the embodiments of Figures 32 and 33 of the ’827 patent. We note that dependent claims 2 and 3 use the phrase “not engage” with respect to a “second osteophyte.” Ex. 1001, 119:30, 119:36–37 (claims 2, 3). Nevertheless, dependent claims 4 and 5 require that the patient-specific surface “substantially engage[s]” an osteophyte (id. at 119:41–46), and therefore the principle of claim differentiation indicates that independent claim 1 has a broader scope than dependent claims 4 and 5.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“The next question is whether referencing osteophytes is the “natural result flowing from” Radermacher’s technique, under the aforementioned Oelrich test, or whether it otherwise would have been obvious to apply Radermacher’s technique to a bone surface with osteophytes. Petitioner argues that it would have been obvious to apply Radermacher’s technique to a bone surface with osteophytes because (1) such a template would be a negative of the “natural (i.e. not pre-treated) surface”; (2) referencing any osteophyte would, in some cases, aid in alignment because the unique structure of the osteophyte would help ensure that the template was placed in the proper position; and (3) it would eliminate the need to pre-treat the joint to remove the osteophyte in a preliminary surgical step, thus reducing surgical time and improving patient safety. Pet. 30 (citing, e.g., Ex. 1003, 10, 12; Ex. 1002 ¶¶ 116–117).” slip op. at 14
- BurdenNot shown unpatentable
“Thus, the prior art relied upon in the asserted ground does not disclose referencing an osteophyte, expressly or inherently. Additionally, Petitioner does not provide adequate evidence that it would have been obvious to apply the technique of Radermacher in patients with osteophytes to engage (or avoid or reference) the osteophyte, as opposed to performing an alternate technique, such as first removing the osteophytes. In particular, Petitioner has not provided adequate evidence of a reasonable likelihood of success of applying Radermacher’s technique to a bone surface with osteophytes beyond unsupported and conclusory assertions thereof. For these reasons, we determine that Petitioner has not demonstrated a reasonable likelihood that the combination of Radermacher and Alexander renders obvious independent claim 1. Accordingly, we determine that Petitioner has failed to establish a reasonable likelihood that it would prevail in its assertion that independent claim 1, or dependent claims 2–13, 32, 38, and 44–46, are unpatentable as obvious over Radermacher and Alexander.5” slip op. at 17
Claim construction§ 103 obviousnessPatents in suitUS 8,657,827 - Smith & Nephew, Inc. v. Conformis, Inc.Institution deniedPTAB · Sep 12, 2017 · IPR2017-00983 · APJ James A Worth · IPR · Institution
The Board denied both petitions and instituted no trial, finding no reasonable likelihood that claims 1–25, 28, 29, 32–46, or 50–64 were unpatentable on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under [35 U.S.C. §] 311 and any response filed under [35 U.S.C. §] 313 shows that 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); see also 37 C.F.R. § 42.108. For the reasons set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood that claims 1–25, 28, 29, 32–46, and 50–64 are unpatentable. Accordingly, we do not institute an inter partes review of claims 1–25, 28, 29, 32–46, and 50–64 of the ’827 patent based on the grounds asserted in the petitions.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“unexpired patent according to the broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs. v. Lee, LLC, 136 S. Ct. 2131, 2142–46 (2016). Under that standard, and absent any special definitions, we give claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms must be set forth with reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner requests a construction of the term “references the osteophyte.” Pet. 17–18. Patent Owner does not propose construction of any terms. As to “references the osteophyte,” Petitioner states that the ’827 patent does not define the term “reference,” but argues the broadest reasonable construction of the limitation includes “at least a patient-specific surface that engages or avoids an osteophyte.” Id. Patent Owner does not address this issue directly in this proceeding. For purposes of this Decision, we determine that the broadest reasonable construction of the “references the osteophyte” limitation includes a patient specific surface that “engages or avoids the osteophyte,” consistent with the embodiments of Figures 32 and 33 of the ’827 patent. We note that dependent claims 2 and 3 use the phrase “not engage” with respect to a “second osteophyte.” Ex. 1001, 119:30, 119:36–37 (claims 2, 3). Nevertheless, dependent claims 4 and 5 require that the patient-specific surface “substantially engage[s]” an osteophyte (id. at 119:41–46), and therefore the principle of claim differentiation indicates that independent claim 1 has a broader scope than dependent claims 4 and 5.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“The next question is whether referencing osteophytes is the “natural result flowing from” Radermacher’s technique, under the aforementioned Oelrich test, or whether it otherwise would have been obvious to apply Radermacher’s technique to a bone surface with osteophytes. Petitioner argues that it would have been obvious to apply Radermacher’s technique to a bone surface with osteophytes because (1) such a template would be a negative of the “natural (i.e. not pre-treated) surface”; (2) referencing any osteophyte would, in some cases, aid in alignment because the unique structure of the osteophyte would help ensure that the template was placed in the proper position; and (3) it would eliminate the need to pre-treat the joint to remove the osteophyte in a preliminary surgical step, thus reducing surgical time and improving patient safety. Pet. 30 (citing, e.g., Ex. 1003, 10, 12; Ex. 1002 ¶¶ 116–117).” slip op. at 14
Claim construction§ 103 obviousnessPatents in suitUS 8,657,827
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.