- The Boeing Company v. Seymour LevineAll claims unpatentablePTAB · Dec 20, 2016 · IPR2015-01341 · APJ Trenton A Ward · IPR · Final written decision
Claims 4, 5, 8, 9, 10, 14, and 16 are unpatentable as obvious under § 103 over the combinations listed in the decision.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The definition of “advice” is “information or notice given.” Ex. 3001 (Webster’s Third New International Dictionary 32 (1971), 3.). Thus, the plain and ordinary meaning of “maintenance advice” is consistent with the aforementioned evidence, in that “maintenance advice” can include maintenance information, but does not require “recommended maintenance actions.” Patent Owner argues that this dictionary definition cited by the Board includes an alternative definition of “advice” as a “recommendation regarding a decision or course of conduct.” PO Resp. 33 (citing Ex. 3001, 3). Patent Owner further argues that this alternative definition of “advice” is most consistent with specification. PO Resp. 33. Patent Owner fails, however, to cite to any portions of the specification to support this argument (see id.) and fails to explain why we should not be guided by the more general statements in the specification, such as the description in the specification that a “preferred maintenance advisory” can be based “on an expert system for fault isolation,” which is in no way “recommended maintenance actions.” Ex. 1001, 3:36–37. We are not persuaded by Patent Owner’s argument that “maintenance advice” must include recommended maintenance actions. Accordingly, we adopt the portion of the proposed definitions on which the parties agree and determine that the term “maintenance advice” means “problem-specific maintenance information.” See also Dec. 7–8.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“skill in the art relevant to the ’618 patent would have a “B.S. degree in electrical, systems, or computer engineering, or an FAA Mechanic Certificate with an airframe rating in accordance with 14 CFR part 65.71 and 65.85.” Ex. 1002 ¶ 15. According to Patent Owner’s Declarant, Mr. Grabowsky, a person of ordinary skill in the art relevant to the ’618 patent would have “at least a B.S. degree in electrical, systems, or computer engineering, or an FAA Mechanic Certificate with an airframe rating in accordance with 14 CFR part 65.71 and 65.85; as well as either an M.S. or equivalent work experience, such as 3-5 years of experience in avionics.” Ex. 2011 ¶ 8. Thus, both declarants generally agree on the level of skill, although Mr. Grabowsky suggests experience is required in addition to the B.S. degree or the FAA Mechanic Certificate. See id. Based on our review of the ’618 patent, the types of problems and solutions described in the ’618 patent and cited prior art, and the testimony of Petitioner’s Declarant and Patent Owner’s Declarant, we adopt Petitioner’s definition of a person of ordinary skill in the art at the time of the claimed invention. We are not persuaded that the additional experience of an M.S. or equivalent work experience, such as 3-5 years of experience in avionics, is required, as suggested by Mr. Grabowsky, as we are unclear as to why the claimed subject matter is beyond the abilities of someone who otherwise meets applicable federal regulatory standards. Based on the stated qualifications of Dr. Helfrick (Ex. 1002 ¶¶ 5–9) and the stated qualifications of Mr. Grabowsky (Ex. 2011 ¶¶ 6–7), Petitioner’s Declarant and Patent Owner’s Declarant both meet the requirements of this definition. We note that the applied prior art also reflects the appropriate level of skill at the time of the claimed invention. See Okajima, 261 F.3d at 1355.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“and ARINC 624-1 because ARINC 624-1 is a standard directed to the very types of on-board systems discussed in Ward.”)). Additionally, Petitioner contends that ARINC publishes standards for the aviation industry, developed by committees that include aircraft manufacturers, avionics manufacturers, and airlines, and that the ACARS transmitter disclosed in Ward is based on, and, thus, would follow, an ARINC standard. Pet. 30 (citing Ex. 1002 ¶¶ 23, 75). Also, Petitioner contends that both Ward and ARINC 624-1 discuss utilizing (1) onboard maintenance systems including ACMS to collect aircraft performance data and (2) an ACARS transmitter to transmit such data to a ground station. Pet. 30. Petitioner adds that ARINC 624-1 provides an explicit motivation to utilize Ward’s ground based maintenance analysis software in implementing its maintenance system, because ARINC 624-1 states that “if known in advance of an airplane’s arrival at a terminal, selected information held in the OMS central maintenance computer’s memory could be useful to line maintenance personnel in planning timely corrective action.” Pet. 30–31 (quoting Ex. 1014 § 2.2.4). We agree, for the reasons stated by Petitioner, that, given the similarity and overlap in disclosures, and applicability of the ARINC standard to the ACARS transmitter of Ward, a person of skill in the art would have been motivated to improve the system in Ward with the teachings in ARINC 624-1. In view of the foregoing, we determine Petitioner has presented and sufficiently established an “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness” with respect to claim 4 for this ground, and we adopt its contentions as our own. KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 21
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“on an aircraft having a flight data recorder.” Pet. Reply 15.10 Furthermore, Petitioner identifies that claims 8–10 all require “aircraft position data directed to said flight data recorder.” Id. Petitioner argues that Mr. Levine’s October 9, 1996 Invention Disclosure is insufficient, because it does not reflect the conception of the invention that Patent Owner ultimately claimed, which requires two data recorders—one onboard the aircraft and a second, remote recorder on the ground. Id. We do not agree with Petitioner’s argument that claims 4 and 8–10 require a flight data recorder on the ground, as claim 4 merely recites a “central station” “configured to receive and analyze said digital aircraft performance.” We do agree, however, with Petitioner’s argument that the express language of independent claim 4 requires “an aircraft having a flight data recorder.” Furthermore, claim 4 requires that the “digital aircraft performance data,” which the “central station” is configured to receive and analyze, is “data directed to the flight data recorder.” Thus, the invention recited in independent claim 4, and its dependent claims, must include a flight data recorder onboard the aircraft and, separately, a central station configured to receive and analyze data directed to the onboard flight data recorder. 10 The recitation “[a]n aircraft maintenance system for use on an aircraft having a flight data recorder” appears in the preamble of claim 4. “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Marketing Int’l., Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). Here, the body of claim 4 refers to “the flight data recorder” as an active limitation in the claim. Therefore, we determine that the preamble is limiting for claim 4.” slip op. at 31
Patent outcomesUS RE39,618 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham - Vista Outdoor Operations LLC v. Liberty Ammunition, LLCRehearing deniedPTAB · Oct 31, 2016 · IPR2016-00539 · APJ Michael L Woods · IPR · Rehearing
The Board denied rehearing and left in place the denial of institution for claims 1–42 on all six grounds, finding no overlooked or misapprehended matter.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS The applicable standard for a request for rehearing is set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply. Furthermore, when rehearing a decision on a motion, the Board will review the decision for an abuse of discretion. Id. at § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Board found that these embodiments were distinct, and determined that Petitioner failed to establish a reasonable likelihood of success on its challenges when combining features from these distinct embodiments. See Decision 13–16, 19, 20. With respect to the anticipation ground (Ground 1), the Board explained that “it is not enough that the prior art reference discloses multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Id. at 13 (citing Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371–72 (Fed. Cir. 2008)). With respect to Grounds 2 and 3, the Board determined that Petitioner failed to explain adequately how Woodring’s distinct embodiments are being combined with one another and the cited art to arrive at the claimed invention. Id. at 18, 20.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“The Board found that these embodiments were distinct, and determined that Petitioner failed to establish a reasonable likelihood of success on its challenges when combining features from these distinct embodiments. See Decision 13–16, 19, 20. With respect to the anticipation ground (Ground 1), the Board explained that “it is not enough that the prior art reference discloses multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Id. at 13 (citing Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371–72 (Fed. Cir. 2008)). With respect to Grounds 2 and 3, the Board determined that Petitioner failed to explain adequately how Woodring’s distinct embodiments are being combined with one another and the cited art to arrive at the claimed invention. Id. at 18, 20.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“determined that Petitioner failed to establish a reasonable likelihood of success on its challenges when combining features from these distinct embodiments. See Decision 13–16, 19, 20. With respect to the anticipation ground (Ground 1), the Board explained that “it is not enough that the prior art reference discloses multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Id. at 13 (citing Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371–72 (Fed. Cir. 2008)). With respect to Grounds 2 and 3, the Board determined that Petitioner failed to explain adequately how Woodring’s distinct embodiments are being combined with one another and the cited art to arrive at the claimed invention. Id. at 18, 20.” slip op. at 4
§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,748,325 - Milwaukee Electric Tool Corporation / Techtronic Industries Co. Ltd. et al. v. Irwin Industrial Tool CompanyNo claims unpatentablePTAB · Sep 29, 2016 · IPR2015-01461 · APJ Michael L Woods · IPR · Final written decision
Claims 1–37 were not shown unpatentable: Redford did not anticipate or render the claims obvious, and Redford combined with Starbuck did not render them obvious.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“The party moving to exclude evidence bears the burden of proving that it is entitled to the relief requested—namely, that the material sought to be excluded is inadmissible under the Federal Rules of Evidence. See 37 C.F.R. §§ 42.20(c), 42.62(a).” slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). A presumption exists that a claim term should be construed in light of its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Under the broadest reasonable construction standard, claim terms are generally given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“not enough to find that a prior art device is merely capable of being adapted or modified to operate in a manner that would anticipate the claims. See Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (discussing Fantasy Sports Props., Inc. v. Sportsline.com, Inc., 287 F.3d 1108, 1117–18 (Fed. Cir. 2002)); see also Dell Inc. v. Acceleron, LLC, 818 F.3d 1293, 1299 (Fed. Cir. 2016) (“For anticipation purposes, the absence of such a teaching makes it immaterial whether . . . a user . . . could modify the system to activate such remote booting”). Thus, even if “no claim in the ’554 patent requires an arbor or any other particular drive structure,” as Petitioner asserts (Pet. Reply 18), that Redford’s cleaning flange 60 must be modified in order for it to be “use[d] as a conventional hole saw,” as suggested in the Petition (see Pet. 19), means that Redford is not an anticipatory disclosure. Here, we find Mr. Vallee’s testimony that “there is no portion of the cleaning flange 60 that can be easily connected to a rotating device” persuasive. Ex. 2004 ¶ 53. We do not see how “a hole saw arbor could have been threaded or otherwise attached to the stem extending upward from the cleaning flange,” as argued by Petitioner (Pet. 19), without modifying Redford’s structure. Nothing in Redford discloses that “the stem extending upward from the cleaning flange” is either threaded or otherwise attachable to a different drive structure without modification. See also Ex. 2004 ¶ 53 (“No such standard means of attaching a hole saw arbor to the cleaning flange 60 is described in Redford.”) Furthermore, although Redford discloses that “the cleaning flange could be remov[ed]” from nut driver 40 (Ex. 1003, 6:6–10), this is not a disclosure that the cleaning flange includes structure that allows it to be “connectable to a different drive structure for use as a conventional hole saw,” as Petitioner suggests (Pet. 19). In particular,” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable
“Patent Owner’s argument is persuasive. Petitioner provides insufficient reasoning as to why a person of ordinary skill in the art would have added a second, alternate drive structure to Redford’s cleaning flange 60, when Redford already discloses a drive structure that utilizes pin 54 for attaching body 20 to cleaning flange 60. Petitioner’s proposed modification of Redford’s cleaning flange 60 appears to be premised on an impermissible use of hindsight after review of the ’554 Patent, rather than on a supported reason to modify Redford’s cleaning flange 60. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (stating that the fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning”). We also find unpersuasive Petitioner’s argument that Patent Owner’s own “expert testified that by the ’554 patent’s priority date, it would have been obvious to incorporate such structures into a hole saw” (Pet. Reply 18 (citing Ex. 1008, 36:5–17)). Here, Patent Owner’s expert (Mr. Vallee) simply answered “Yes” in response to the question, “[y]ou would agree that at the time of the [’554 patent] it was obvious that you would have a mandrel and use a power drill to operate a hole saw, correct?” Ex. 1008, 36:5–17. The issue is not whether it would have been obvious to add a mandrel to any hole saw so that it can be driven by a power drill, as posed by the question; rather, the issue is whether it would have been obvious to modify Redford’s cleaning flange 60—which already uses a pin-type attachment mechanism—to include a second attachment mechanism that would avoid the use of the pin.” slip op. at 16
Patent outcomesUS 8,579,554 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,579,554 - Alstom Grid LLC v. Dominion Resources, Inc. And Virginia Electric And Power CompanyInstitution deniedPTAB · Jul 6, 2016 · IPR2016-00504 · APJ Kalyan K Deshpande · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1-3, 5-10, 12, 13, and 15-20 were unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review of claims 1‒3, 5‒10, 12, 13, and 15‒20 of U.S. Patent No. 8,437,883 B2 (Ex. 1002, “the ’883 patent”). Paper 1 (“Pet.”). Dominion Resources, Inc. and Virginia Electric and Power Company (collectively, “Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, and associated evidence, we conclude that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing unpatentability of all the challenged claims. We, therefore, deny the Petition.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Patent Owner argues that Deaver fails to disclose “a signal reporting what was sensed by a sensor that is not included in the subset.” Prelim. Resp. 14‒15. We agree with Patent Owner. As argued by Patent Owner, Petitioner contends that Deaver discloses “alerts” that are transmitted when the minimum and maximum voltage thresholds are exceeded. Prelim. Resp. 14‒15; see Pet. 23. However, the CPVMs transmitting the alerts are monitors at each customer premises that are “selected by an electric utility company as a desired point within the power distribution system [] that will be voltage monitored.” Ex. 1004, 4:1‒3. As such, the CPVMs are all in the subset of sensors being monitored, and none of CPVMs are “not included in the subset.” Accordingly, we agree with Patent Owner that Deaver fails to disclose “at least one other sensor of the plurality of sensors that is not included in the subset is further configured to send a respective reporting signal.”” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We agree with Patent Owner. Petitioner fails to provide articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Petitioner generally states that Deaver, LaPlace, Richeson, and Bell are analogous to the ’883 patent because they are in the same field of endeavor, dealing with power distribution systems and power management in power distribution systems, and metering technology. Pet. 16. Petitioner goes on to characterize each of the references in this field of endeavor. Id. at 16‒17. Although a determination that the cited prior art is analogous to the ’883 patent provides insight into the scope and content of the prior art to be examined, such a determination is, by itself, insufficient to support the conclusion of obviousness. Petitioner must set forth an articulated reasoning with some rational underpinning in supporting its legal conclusion of obviousness, and must provide a reason that would have prompted a person of ordinary skill in the art to combine the elements disclosed by each of the references. Here, Petitioner has failed to provide such a reasoning.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that there is no need to construe expressly any of the claim terms at this time. Although Petitioner and Patent Owner disagree as to the construction of the term “energy delivery parameter,” we need not construe this term because it is not necessary to resolve the dispositive issues discussed below. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“only those terms need to be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 6
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,437,883 - Alstom Grid LLC v. Dominion Resources, Inc. And Virginia Electric And Power CompanyInstitution deniedPTAB · Jul 6, 2016 · IPR2016-00503 · APJ Kalyan K Deshpande · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–5, 7–13, 15, 16, and 18–34 were unpatentable over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner. Petitioner fails to provide articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that there is no need to construe expressly any of the claim terms at this time. Although Petitioner and Patent Owner disagree as to the construction of the term “energy delivery parameter,” we need not construe this term because it is not necessary to resolve the dispositive issues discussed below. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“only those terms need to be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Patent Owner argues that Deaver fails to disclose “a signal reporting what was sensed by a sensor that is not included in the subset.” Prelim. Resp. 14‒16. We agree with Patent Owner. As argued by Patent Owner, Petitioner contends that Deaver discloses “alerts” that are transmitted when the minimum and maximum voltage thresholds are exceeded. Prelim. Resp. 14‒16; see Pet. 22. However, the CPVMs transmitting the alerts are monitors at each customer premises that are “selected by an electric utility company as a desired point within the power distribution system [] that will be voltage monitored.” Ex. 1004, 4:1‒3. As such, the CPVMs are all in the subset of sensors being monitored, and none of the CPVMS are “not included in the subset.” Accordingly, we agree with Patent Owner that Deaver fails to disclose “at least one other sensor of the plurality of sensors that is not included in the subset is further configured to send a respective reporting signal.” Patent Owner further argues that Deaver fails to disclose “add[ing] to the subset the at least one other sensor that sent the respective reporting signal,” as recited by independent claim 1. Prelim. Resp. 8‒14. We agree with Patent Owner. Petitioner contends that Deaver discloses voltage adjustment instructions based on the reported measurement data, and “because any number of customer premises may be selected for voltage monitoring, the reporting meter could be added to the monitored subset.” Pet. 23 (citing Ex. 1004, 4:45‒60, 5:47‒62, 6:46‒51; Ex. 1001, 38‒42). However, as argued by Patent Owner, Deaver is silent as to adding to the subset of CPVMs being monitored. See Prelim. Resp. 9. At best, Petitioner’s argument that any number of customer premises may be selected, and meters could be added to the subset is an argument towards the obviousness of this limitation, not anticipation, as challenged by Petitioner. See Pet. 23. Accordingly, we agree with Patent Owner that Deaver fails to disclose “wherein the voltage controller is further configured to add to the subset the at least one other sensor in response to receiving the reporting,” as recited by independent claim 1.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We agree with Patent Owner. Petitioner fails to provide articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Petitioner generally states that Deaver, LaPlace, Richeson, and Bell are analogous to the ’510 patent because they are in the same field of endeavor, dealing with power distribution systems and power management in power distribution systems, and metering technology. Pet. 14. Petitioner goes on to characterize each of the references in this field of endeavor. Id. at 14‒15. Although a determination that the cited prior art is analogous to the ’510 patent provides insight into the scope and content of the prior art to be examined, such a determination is, by itself, insufficient to support the conclusion of obviousness. Petitioner must set forth an articulated reasoning with some rational underpinning in supporting its legal conclusion of obviousness, and must provide a reason that would have prompted a person of ordinary skill in the art to combine the elements disclosed by each of the references. Here, Petitioner has failed to provide such a reasoning. We further agree with Patent Owner that testimony from Dr. Kezunovic’s Declaration should not be incorporated in to the Petition. See Prelim. Resp. 31‒33. The Petition itself does not address a rationale to combine Deaver, LaPlace, Richeson, Bell, Keefe, and ANSI C84.1-2006, and further does not direct us to discussion in Dr. Kezunovic’s Declaration for a rationale to combine. At best, Dr. Kezunovic asserts that “DMS, smart meters, and substations are well-known prior art elements, whereby their combination yields predictable results.” Ex. 1001, 95; see Ex. 1001, 176, 238, 250. However, Dr. Kezunovic does not provide any explanation as to why the combination of “DMS, smart meters, and substations” would yield predictable results. Accordingly, even if we were to incorporate Dr. Kezunovic’s Declaration in to the Petition, which we do not, we are not persuaded that Petitioner has set forth articulated reasoning with some rational underpinning in supporting its legal conclusion of obviousness. As such, Petitioner has not demonstrated a reasonable likelihood in prevailing in its obviousness challenges.” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,577,510 - The Boeing Company v. Seymour LevineInstitution deniedPTAB · Apr 15, 2016 · IPR2016-00023 · APJ Trenton A Ward · IPR · Institution
The Board denied institution on all challenged claims under § 325(d) because the petition presented substantially the same prior art and arguments as the pending IPR2015-01341, and dismissed the joinder motion.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Because the Petition presents substantially the same prior art, and substantially the same arguments, as the Petition in the 1341 IPR, we exercise our discretion to deny institution of review under 35 U.S.C. § 325(d).” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“whether to join a party to an inter partes review under 35 U.S.C. § 315(c): JOINDER.–If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. Thus, joinder in an inter partes review may be warranted in certain circumstances, but is not required in any. See Sony Corp. v. Network-1 Sec. Solutions, Inc., Case IPR2013-00386, slip. op. at 3 (PTAB July 29, 2013) (Paper 16) (“[t]he Board will determine whether to grant joinder on a caseby-case basis, taking into account the particular facts of each case, substantive and procedural issues, and other considerations”). The statute does, however, set forth at least one circumstance in which we do not have the discretion to join a party: if the Board determines that the second petition does not warrant institution. 35 U.S.C. § 315(c) (“the Director . . . may join as a party . . . any person who properly files a petition . . . that the Director . . . determines warrants the institution of an inter partes review under section 314”).” slip op. at 8
Discretionary denial - Runway Safe LLC v. Engineered Arresting SystemsInstitution deniedPTAB · Feb 29, 2016 · IPR2015-01921 · APJ Michael L Woods · IPR · Institution
The Board denied institution on claims 1–3 because neither obviousness ground showed a reasonable likelihood of success, for lack of adequate motivation to combine.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Upon reviewing the record, we conclude that Petitioner has not demonstrated that the proposed modification of Gwynne—which replaces Gwynne’s urea formaldehyde foam with Brubaker ’917’s ceramic foam—is supported by adequate reasoning based on rational underpinnings. KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). In particular, Petitioner’s proposed rationale, “improvement in the water absorption resistance,” ignores the fact that Gwynne’s arrester already has a weatherproofing seal, which addresses the problem of water intrusion. Ex. 1005, 18. Additionally, Petitioner’s modification does not propose to remove Gwynne’s weatherproofing seal, but instead relies on its presence in meeting the claimed “frangible material.” Pet. 26 (citing Ex. 1004 ¶ 58). In that respect, Petitioner does not explain adequately why a skilled artisan would maintain Gwynne’s weatherproofing seal as a part of a structure while also incorporating Brubaker ’917’s water insoluble ceramic foam. Because we are not persuaded that water intrusion is a problem in Gwynne’s arrester system, we are not persuaded by Petitioner’s proffered rationale that a person of ordinary skill in the art would replace Gwynne’s urea formaldehyde foam with ceramic foam. Accordingly, Petitioner has failed to establish a reasonable likelihood of success at trial on these challenges, and we, therefore, do not institute an inter partes review of claims 1–3 on these grounds.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Upon reviewing the record, we conclude that Petitioner has not demonstrated that the proposed modification of Gwynne—which replaces Gwynne’s urea formaldehyde foam with Brubaker ’917’s ceramic foam—is supported by adequate reasoning based on rational underpinnings. KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). In particular, Petitioner’s proposed rationale, “improvement in the water absorption resistance,” ignores the fact that Gwynne’s arrester already has a weatherproofing seal, which addresses the problem of water intrusion. Ex. 1005, 18. Additionally, Petitioner’s modification does not propose to remove Gwynne’s weatherproofing seal, but instead relies on its presence in meeting the claimed “frangible material.” Pet. 26 (citing Ex. 1004 ¶ 58). In that respect, Petitioner does not explain adequately why a skilled artisan would maintain Gwynne’s weatherproofing seal as a part of a structure while also incorporating Brubaker ’917’s water insoluble ceramic foam. Because we are not persuaded that water intrusion is a problem in Gwynne’s arrester system, we are not persuaded by Petitioner’s proffered rationale that a person of ordinary skill in the art would replace Gwynne’s urea formaldehyde foam with ceramic foam. Accordingly, Petitioner has failed to establish a reasonable likelihood of success at trial on these challenges, and we, therefore, do not institute an inter partes review of claims 1–3 on these grounds.” slip op. at 7
§ 103 obviousnessPatents in suitUS 7,597,502 - C.R. Bard, Inc. v. Medical Components, Inc.Institution deniedPTAB · Feb 9, 2016 · IPR2015-01660 · APJ Kerry Begley · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 5–13, 15–19, 21, and 22 were obvious over any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . 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.” Having considered the Petition and the Preliminary Response, we determine that the information presented does not show that there is a reasonable likelihood that Petitioner would prevail in establishing that any of the challenged claims of the ’325 patent are unpatentable. Therefore, we deny institution of inter partes review.” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityNot reached
“E. REAL PARTY-IN-INTEREST Patent Owner argues in its Preliminary Response that the Petition should have named Bard Access Systems, Inc. as a real party-in-interest in addition to C.R. Bard, Inc. Prelim. Resp. 54–59. In view of our determination that Petitioner has not made a sufficient showing that it would prevail in establishing that any of the challenged claims are unpatentable, we do not reach this issue.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“First, we agree with Patent Owner that the Petition does not provide adequate reasoning with rational underpinning for why it would have been obvious in view of Powers to modify the Titanium Implanted Port of PORTS—which Petitioner does not allege is indicated for power injection— to be rated for power injection. See id. at 8–11; Pet. 24–25, 31. Although claim 1 does not require the recited port assembly to be rated for power injection, modifying the Titanium Implanted Port to handle power injection is an important first step in Petitioner’s obviousness analysis. See Pet. 31. Specifically, as noted above, Petitioner contends that a person of ordinary skill in the art would have known that the Titanium Implanted Port “could be constructed to handle power injection” by modifying it “in view of Powers to handle the higher pressures and flow rates associated with power injection.” Id. (citing Ex. 1009 ¶¶ 147–48). This assertion, however, is conclusory, and relies exclusively on Mr. Tallarida’s declaration testimony, which merely repeats the conclusory statements in the Petition without citation to the asserted prior art references or any other evidence. See id.; Ex. 1009 ¶ 148. Accordingly, his testimony has little, if any, probative value. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (“Nothing in the [federal] rules [of evidence] or in our jurisprudence requires the fact finder to credit the unsupported assertions of an expert witness.”). The Petition and Mr. Tallarida’s cited testimony do not explain how the Titanium Implanted Port of PORTS would have been modified so as to be rated for power injection, nor do they point to any disclosure in Powers that would have suggested how such a modification would have been made. See Pet. 31; Ex. 1009 ¶ 148.” slip op. at 11
- Obviousness (§103) › Analogous artNon analogous art
“asserted ground based on PORTS, Powers, PowerPort, and Hickman, Petitioner has not provided adequate reasoning with rational underpinning for combining PORTS, Powers, Meyer, and Hickman to arrive at the invention recited in the challenged claims. We agree with Patent Owner that Petitioner has not shown that Meyer cures the deficiencies of PORTS and Powers. See Prelim. Resp. 35–37. Petitioner alleges that the alphanumeric cutouts in the plastic collar of Meyer would be visible under X-ray examination, yet neither Meyer nor the cited paragraphs from Mr. Tallarida’s declaration testimony sufficiently support this assertion, particularly in light of contradictory evidence in the record. See Pet. 55 (citing Ex. 1006; Ex. 1009 ¶¶ 278–84); see also Ex. 1009 ¶ 193 (opining that silicone is radiotransparent); Ex. 1001, [57], 2:13–17, 4:61–5:3 (explaining that radiopaque agent can be applied to plastic material, such as silicone elastomer, to allow indicia to appear under X-ray examination). Moreover, even if the collar in Meyer can be considered a flange,4 it is not a flange of anything resembling a venous access port. Petitioner also has not shown adequately that Meyer, which discloses collars for containers, is “from the same field of endeavor” or “reasonably pertinent to the particular problem” 4 We note that Meyer’s collar does not meet Petitioner’s proffered construction of the term “flange,” “a rim extending outwardly from the base for attachment of the port to a patient.” Pet. 5; see Prelim. Resp. 36. addressed by the inventors of the ’325 patent in developing the venous access ports recited in the challenged claims, as required to be prior art under 35 U.S.C. § 103. Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011) (quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)); see Ex. 1006, 3 (Summary); Prelim. Resp. 35. Therefore, we are not persuaded by Petitioner’s argument that Meyer “emphasize[s]” the obviousness of including X-ray discernable indicia in the form of cutouts or voids in the flange of the Titanium Implanted Port of PORTS. See Pet. 57.” slip op. at 18
§ 103 obviousnesscites KSRPatents in suitUS 8,257,325 - C.R. Bard, Inc. v. Medical Components, Inc.Institution deniedPTAB · Feb 4, 2016 · IPR2015-01654 · APJ Lynne E Pettigrew · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–22 obvious over any of the three asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“the Petition fails to provide adequate reasoning for combining the references in the manner asserted to arrive at the claimed subject matter. Prelim. Resp. 7–38. Having reviewed both parties’ arguments and evidence, we agree with Patent Owner that Petitioner has not articulated sufficient rationale with support in the record for modifying the Titanium Implanted Port of PORTS as suggested in the Petition. In particular, we are persuaded by the following arguments presented by Patent Owner. First, we agree with Patent Owner that the Petition does not provide adequate reasoning based on rational underpinnings for why it would have been obvious in view of Powers to modify the Titanium Implanted Port of PORTS—which Petitioner does not allege can handle power injection—to be rated for power injection. See id. at 8–11. Although claim 1 does not require the recited port assembly actually be rated for power injection, modifying the Titanium Implanted Port to handle power injection is an important first step in Petitioner’s obviousness analysis. See Pet. 29. Specifically, as noted above, Petitioner states that a person of ordinary skill in the art would have known the Titanium Implanted Port could be constructed to handle power injection by modifying it in view of Powers to handle higher pressures and flow rates associated with power injection. Id. Petitioner’s assertion, however, is conclusory, and relies only on Mr. Tallarida’s declaration testimony, which merely repeats the conclusory statements in the Petition without citation to the asserted prior art references or any other evidence. See Ex. 1009 ¶ 139. Accordingly, his testimony has little, if any, probative value. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Moreover, neither the Petition nor Mr. Tallarida’s testimony explains how the Titanium Implanted Port would have been modified so as to be rated for power injection, nor do they point to any disclosure in Powers that would have suggested how such a modification would have been made. See Pet. 29; Ex. 1009 ¶ 139.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“First, we agree with Patent Owner that the Petition does not provide adequate reasoning based on rational underpinnings for why it would have been obvious in view of Powers to modify the Titanium Implanted Port of PORTS—which Petitioner does not allege can handle power injection—to be rated for power injection. See id. at 8–11. Although claim 1 does not require the recited port assembly actually be rated for power injection, modifying the Titanium Implanted Port to handle power injection is an important first step in Petitioner’s obviousness analysis. See Pet. 29. Specifically, as noted above, Petitioner states that a person of ordinary skill in the art would have known the Titanium Implanted Port could be constructed to handle power injection by modifying it in view of Powers to handle higher pressures and flow rates associated with power injection. Id. Petitioner’s assertion, however, is conclusory, and relies only on Mr. Tallarida’s declaration testimony, which merely repeats the conclusory statements in the Petition without citation to the asserted prior art references or any other evidence. See Ex. 1009 ¶ 139. Accordingly, his testimony has little, if any, probative value. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Moreover, neither the Petition nor Mr. Tallarida’s testimony explains how the Titanium Implanted Port would have been modified so as to be rated for power injection, nor do they point to any disclosure in Powers that would have suggested how such a modification would have been made. See Pet. 29; Ex. 1009 ¶ 139.” slip op. at 11
- Obviousness (§103) › Analogous artNon analogous artDecided for patent owner
“For substantially the same reasons discussed above with respect to the asserted obviousness ground based on PORTS, Powers, PowerPort, and Hickman, Petitioner has not provided adequate reasoning based on rational underpinnings for combining the references to arrive at the claimed invention. With regard to Meyer, we agree with Patent Owner that Petitioner has not shown Meyer cures the deficiencies of PORTS and Powers. See Prelim. Resp. 35–38. Petitioner alleges the alphanumeric cutouts in Meyer would be visible under X-ray examination, yet neither Meyer nor the cited paragraphs from Mr. Tallarida’s declaration testimony sufficiently support such a statement. See Pet. 50–51 (citing Ex. 1006; Ex. 1009 ¶¶ 227–31). Moreover, even if the collar in Meyer can be considered a flange, it is not a flange of anything resembling a venous access port. Petitioner has not shown adequately that Meyer, which discloses collars for containers, is “from the same field of endeavor” or “reasonably pertinent to the particular problem” addressed by the inventors of the ’160 patent in developing the recited venous access port, as required to be prior art under 35 U.S.C. § 103. Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011) (quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)); see Ex. 1006, 3 (summary). Therefore, we are not persuaded by Petitioner’s argument that Meyer “emphasize[s]” the obviousness of including X-ray discernable indicia in the form of voids in the flange of the Titanium Implanted Port of PORTS. See Pet. 53.” slip op. at 17
- PTAB / AIA Trials › Real party in interest / privityNot reached
“E. Real Party-in-Interest Patent Owner alleges in its Preliminary Response that the Petition should have named Bard Access Systems, Inc. as a real party-in-interest in addition to C.R. Bard, Inc. Prelim. Resp. 54–59. In view of our determination that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims, we do not reach this issue.” slip op. at 18
§ 103 obviousnessPatents in suitUS 8,852,160 - Stellar Energy Americas, Inc. v. Tas Energy, Inc.Rehearing deniedPTAB · Jan 29, 2016 · IPR2015-01212 · APJ Barry L Grossman · IPR · Rehearing
The Board denied rehearing and left in place its decision not to institute review of claims 2, 7, 10, and 11 because the cited art did not address the claims’ temperature limitations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“an abuse of discretion. 37 C.F.R. § 42.71(c). The burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): (d) Rehearing. . . . The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“ASHRAE Thermal Storage also discloses that “[w]ater become less dense as its temperature is lowered from 39°F [the approximate temperature of maximum water density for pure water under normal atmospheric conditions] to freezing (Table I). Therefore, stratification would not work in this range . . . .” Id. (emphasis added). ASHRAE Thermal Storage suggests, at best, that lowering the temperature more than 1.2º F below the temperature of maximum water density for pure water at normal atmospheric conditions will not work. We considered this complete disclosure of the reference in determining whether it was reasonably likely that claim 2 would have been obvious based on Andrepont, Mornhed, and ASHRAE Thermal Storage.” slip op. at 4
NonePatents in suitUS 6,318,065
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.