- 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 - International Flavors & Fragrances Inc. v. Zoomessence, Inc.All claims unpatentablePTAB · Dec 14, 2016 · IPR2015-01418 · APJ Mitchell G Weatherly · IPR · Final written decision
Claims 1, 16, 19, and 28–30 are unpatentable: claims 1, 16, and 19 are anticipated by Merritt and also obvious over two combinations; claims 28–30 are obvious over specified combinations.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Id. at 2:8–14. The Specification describes a similar cooling effect within the drying chamber of the claimed system as follows: “It has been demonstrated that an inlet air temperature of about 40° C. may result in an outlet air temperature of about 32° C. from the drying chamber 107.” Id. at 7:35–37. Based on these disclosures, we understand that drying fluid is hotter at the inlet than it is at the outlet. Accordingly, claims that recite the temperature of drying fluid “at introduction into the drying chamber,” e.g., claims 4 and 5, effectively limit the highest permitted temperature of the drying fluid, which includes “air,” at any point in the drying chamber. Claim 1 recites an upper limit of 100°C on the temperature of one component of the drying fluid, “air,” without limiting the location at which the temperature is measured. We conclude, therefore, that the upper limit of 100°C as recited in claim 1 refers to the temperature of air measured at any location within the drying chamber, including at the outlet. Petitioner proposes that the broadest reasonable interpretation of “the drying fluid comprises air at temperature that is above freezing temperature of the liquid solvent and below 100°C” requires that “at some location within the internal volume of the drying chamber there is air at a temperature that is above the freezing temperature of the liquid solvent and below 100°C.” Pet. 7–8 (citing Ex. 1010 ¶ 46). Based on our review of claims 1–5 and the Specification, we adopt Petitioner’s interpretation.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“To establish anticipation, each limitation in a claim must be found in a single prior art reference, arranged as recited in the claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). While the limitations must be arranged or combined in the same way as in the claim, identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Moreover, a reference anticipates a claim “if it discloses the claimed invention such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.” In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995). Thus, “it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968).” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“a. Independent Claim 1 Petitioner’s challenge to claim 1 as being obvious in view of the combination of Merritt, Dobry, and Skelbæk, is based largely upon the same comparison of Merritt to the claim. See Pet. 33–37, 41–42. Nevertheless, Petitioner states, and we agree, that “[i]f there is any question about whether low temperature spray drying could be used in the encapsulation of active ingredients in a carrier, Skelbæk teaches the advantages of drying liquid drops under the supply of air having a temperature of 50–120°C.” Pet. 37 (citing Ex. 1008, Abstract, pg. 2–3.). We further agree with the rationale of Petitioner that the advantages that would have been obvious to an ordinarily skilled artisan from using the lower temperature range of Skelbæk with Merritt are “a denser, non-permeable matrix material” and to “retain high levels of flavorant.” Id. (citing Ex. 1010 ¶ 107). In addition to relying on Merritt and Skelbæk, Petitioner cites Dobry’s Figure 1 in its claim chart, which schematically illustrates a conventional spray-drying system.12 See Pet. 41–42. Patent Owner’s principle argument against obviousness over Merritt, Dobry, and Skelbæk is the same as its argument against anticipation by Merritt, i.e., that Merritt includes gas above 100°C as well as below 100°C. We have rejected this argument as a matter of claim interpretation, for the reasons set forth in Part II.D.2.a above. In addition, Patent Owner asserts that Skelbæk may not be relied upon by Petitioner for the teaching of the use of a lower temperature drying fluid in a drying chamber because Skelbæk’s spray drying process yields partially dried material that requires further drying. PO Resp. 46 (citing Ex. 1008, 6:20–24). In particular, Patent Owner points out that Skelbæk uses a fluidized bed to dry further the product leaving Skelbæk’s spray drying process. Id. 12 Dobry’s Figure 1 is virtually identical to Figure 1 in the ’388 patent. Compare Ex. 1007, Fig. 1 with Ex. 1001, Fig. 1. Figure 2 of the ’388 patent is virtually identical to Figure 1 of the ’388 patent, but merely replaces the “process heater” of Figure 1 with a “process dehumidifier.” Compare Ex. 1001, Fig. 2 with id. at Fig. 1.” slip op. at 22
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Patent Owner’s argument is unpersuasive because Watanabe’s use of excipients does not diminish Watanabe’s express suggestion to use a dehumidifier in a spray drying process. Rather, we agree with Petitioner that an ordinarily skilled artisan would have understood that a dehumidifier can be used for dehumidification purposes in spray-drying processes, even when the materials being dried differ. Further, we find that Watanabe, Merritt, and Dobry are all analogous art to the claimed invention (and to one another) inasmuch as they relate to the field of spray drying and the problem of drying. See In re Bigio, 381 F.3d 1320, 1325–26 (Fed. Cir. 2004).” slip op. at 27
Patent outcomesUS 8,939,388 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,939,388 - PTAB · Sep 30, 2016 · IPR2015-00842 · APJ James P Calve · IPR · Rehearing
The Board denied Wonderland’s rehearing request, leaving in place the finding that claims 1–5 and 8–29 are unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party challenging a final written decision in a request for rehearing must identify all matters the party believes that the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). The challenging party bears the burden of showing that the decision should be modified. Id.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“It is well-settled that “a” and “an” mean “one or more” unless a clear intent is evinced to limit those terms to just “one.” Dec. 17. In contrast to Patent Owner’s arguments in this proceeding (Req. 9–11), Patent Owner, in related district court action, repeatedly asserted that the term “an” in claim 8 can mean “one or more.” Ex. 1032, 6–7 (“it is generally accepted in patent parlance that ‘a’ or ‘an’ can mean ‘one or more.’”), 9 (“it is black-letter patent law that ‘an’ means ‘one or more’ in a patent claim.”).” slip op. at 5
Claim constructioncites Phillips - PTAB · Sep 30, 2016 · IPR2015-00841 · APJ James P Calve · IPR · Rehearing
The Board denied Wonderland’s rehearing request and declined to modify the final written decision finding claims 15–29 unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party challenging a final written decision in a request for rehearing must identify all matters the party believes that the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). The challenging party bears the burden of showing that the decision should be modified. Id.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“It is well-settled that “a” and “an” mean “one or more” unless a clear intent is evinced to limit those terms to just “one.” Dec. 17. In contrast to Patent Owner’s arguments in this proceeding (Req. 8–9), Patent Owner, in related district court action, repeatedly asserted that the term “an” in claim 8 can mean “one or more.” Ex. 1032, 6–7 (“it is generally accepted in patent parlance that ‘a’ or ‘an’ can mean ‘one or more.’”), 9 (“it is black-letter patent law that ‘an’ means ‘one or more’ in a patent claim.”).” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“baby crib, wherein each of the upright tubes has an outer wall that defines an outer contour shape of the upright tube” in claim 15 consistent with the plain language of the claims in light of the ’919 Specification. Claim 15 recites “upright tubes defining corners of the baby crib, wherein each of the upright tubes has an outer wall that defines an outer contour shape of the upright tube.” Ex. 1001, 5:7–9. We found that Bidwell discloses retaining members 22 that satisfy these claimed features. Dec. 42.” slip op. at 27
Claim constructioncites Phillips - 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 - J Squared, Inc. D/B/A University Loft Company v. Sauder Manufacturing CompanySome claims unpatentablePTAB · Jun 27, 2016 · IPR2015-00774 · APJ Linda E Horner · IPR · Final written decision
Claims 1, 2, 6–8, 10, and 11 are unpatentable over Mackey and/or Pollack II and Pollack I; claims 4, 5, 9, and 12–14 are not held unpatentable.
RulingsFinal written decision- BurdenFwd mixedMixed
“i. Conclusion - Obviousness We have weighed the entirety of the evidence in this proceeding, including J Squared’s evidence of obviousness and Sauder’s evidence of non-obviousness. On balance, we conclude that J Squared has shown by a preponderance of the evidence that the subject matter of claims 1, 2, 6‒8, 10, and 11 would have been obvious over Pollack II and Pollack I, but has not shown that the subject matter of claims 9 and 12‒14 would have been obvious over this prior art. III. CONCLUSIONS For the foregoing reasons, we determine the following: A. J Squared has shown by a preponderance of the evidence that claims 1, 2, 8, 10, and 11 are anticipated under 35 U.S.C. § 102 by Mackey; B. J Squared has not shown by a preponderance of the evidence that claims 4 and 5 are anticipated under 35 U.S.C. § 102 by Mackey; C. J Squared has shown by a preponderance of the evidence that claims 1, 2, 6‒8, 10, and 11 are unpatentable under 35 U.S.C. § 103 as obvious over Pollack II and Pollack I; and D. J Squared has not shown by a preponderance of the evidence that claims 9 and 12‒14 are unpatentable under 35 U.S.C. § 103 as obvious over Pollack II and Pollack I.” slip op. at 64
- Skill levelSkill level board ownOther
“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) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962‒63 (Fed. Cir. 1986)). The court in GPAC held that the Board did not err in in failing to make a specific finding as to the level of skill in the art and relying instead on the references of record to inform it as to the level of skill in the art. Id.; see also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown). J Squared did not proffer a specific level of skill of one of ordinary skill in the art, and relied instead on the prior art to reflect an appropriate level of skill. Tr. 78:15‒20. We find no need for testimony as to the level of skill in the art, as it is demonstrated aptly by the prior art of record. For purpose of this Final Written Decision, we resort to the prior art of record to assess the level of skill of one of ordinary skill in the art. In particular, as discussed below, the prior art explicitly proposes the combination of the teachings of the Pollack references.” slip op. at 37
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Sauder is, in essence, seeking to have the Board rewrite the claim to recite, “A combination consisting of a chair and a stool base portion.” We see no reason to narrow the claim, particularly when the body of the claim itself recites “said combination further comprises an assembly . . . .” Ex. 1001, 10:42. For these reasons, we construe “combination” to include, but not be limited to, a chair and a stool base portion.” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“We reconsider our claim interpretation in light of the additional arguments and evidence provided by Sauder in its Patent Owner Response and by J Squared in its Reply. The function called for in this means plus function claim limitation is “releasably engaging said chair to said base portion.” Ex. 1001, 12:4‒5. We think Sauder has the correct interpretation of the functional recitation of claim 12. The focus of the language of claim 12 is on the verb “engaging,” while the adverb “releasably” modifies the verb “engaging” to simply require that the engagement is effected in such a way that it is not permanent. This understanding is consistent with the claim language used in the remainder of this clause, which focuses on releasable engagement of the chair “to” the base portion. We note that during prosecution of claim 12 (application claim 20) of the ’136 patent before the examiner, Sauder amended the claim language “manually operable means for releasably engaging said chair from said base portion” to recite instead “manually operable means for releasably engaging said chair to said base portion,” thereby clearly shifting the focus of this functional language from one of disengagement to engagement. Ex. 1013, 210. Consistent with our interpretation of “engage,” we construe the term “engaging” to mean locked together. The ’136 patent describes the structure corresponding to the function of releasable engagement, i.e., locking together of the chair to the base as being effected by the claw and the latch engaging the underside of the saddle: The claw 142 (illustrated in FIGS. 9, 10, 13 and 14) extends generally downward from the frame lower portion 106, near the second portion 124 of the frame lower portion 106, and is adapted for cooperating releasable engagement with the base 300. More specifically, and as will be discussed in greater detail in subsequent paragraphs herein, the claw 142 will function so as to releasably engage with a saddle 310 of the base 300. . . . More specifically, the clip clamp latch 160 extends generally downward from the frame lower portion 106, near its first portion 122, and is adapted for cooperating releasable engagement with the base 300 and more specifically with the saddle 310 of the base, discussed further below. Ex. 1001, 5:19‒26, 5:58‒62.” slip op. at 24
Patent outcomesUS 8,585,136 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,585,136 - Baby Trend, Inc. / Denny Tsai et al. v. Wonderland Nurserygoods Co., Ltd.All claims unpatentablePTAB · Jun 27, 2016 · IPR2015-00842 · APJ James P Calve · IPR · Final written decision
Claims 1–5 and 8–29 are unpatentable as obvious over Vaiano and Pasin, alone or with Stoeckler; the contingent motion to amend is denied.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Grounds I and II: Claims 1–5 and 8–29 as obvious over Vaiano and Pasin, alone or further in combination with Stoeckler The parties dispute whether Vaiano (Ex. 1021) discloses a unitary enclosure. Patent Owner argues that it is unclear from Vaiano whether netting 32 is a continuous member. See PO Resp. 22. At the oral hearing, Patent Owner argued that Vaiano’s netting is not continuous, noting that the cross-hatch lines in the Figures from Vaiano do not match up. Tr. 73:17–20. In any event, inherency cannot be established by possibilities or probabilities. PAR Pharmaceutical, Inc. v. TWI Pharmaceuticals, Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014). Pasin (Ex. 1015) and Stoeckler (Ex. 1017) also lack a unitary enclosure member. Similarly, it is, at best, unclear how the ends of fabric 32 in Vaiano emerge from the corner posts 10. See Pet. 22 (averring that Vaiano “does not show the connection mechanisms that create the ‘exposed’ tube look”). Thus, Vaiano does not disclose two ends of fabric emerging out of a single slit, as I understand the “substantially out of contact” limitation to require. This understanding of the “substantially out of contact limitation” hinges on the above claim construction—i.e., the understanding that the transmogrification of the single “slit” limitation into the “substantially out of contact” limitation in reissue, through omission of one and introduction of the other (with concomitant clarification of Figure 5 required by the Examiner), does not permit a broadening of the claims beyond the original disclosure. Pasin and Stoeckler also fail to disclosure this limitation as they” slip op. at 102
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Grounds I and II: Claims 1–5 and 8–29 as obvious over Vaiano and Pasin, alone or further in combination with Stoeckler The parties dispute whether Vaiano (Ex. 1021) discloses a unitary enclosure. Patent Owner argues that it is unclear from Vaiano whether netting 32 is a continuous member. See PO Resp. 22. At the oral hearing, Patent Owner argued that Vaiano’s netting is not continuous, noting that the cross-hatch lines in the Figures from Vaiano do not match up. Tr. 73:17–20. In any event, inherency cannot be established by possibilities or probabilities. PAR Pharmaceutical, Inc. v. TWI Pharmaceuticals, Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014). Pasin (Ex. 1015) and Stoeckler (Ex. 1017) also lack a unitary enclosure member. Similarly, it is, at best, unclear how the ends of fabric 32 in Vaiano emerge from the corner posts 10. See Pet. 22 (averring that Vaiano “does not show the connection mechanisms that create the ‘exposed’ tube look”). Thus, Vaiano does not disclose two ends of fabric emerging out of a single slit, as I understand the “substantially out of contact” limitation to require. This understanding of the “substantially out of contact limitation” hinges on the above claim construction—i.e., the understanding that the transmogrification of the single “slit” limitation into the “substantially out of contact” limitation in reissue, through omission of one and introduction of the other (with concomitant clarification of Figure 5 required by the Examiner), does not permit a broadening of the claims beyond the original disclosure. Pasin and Stoeckler also fail to disclosure this limitation as they” slip op. at 102
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“have infringed a European patent does not lead inexorably to the conclusion that those products copied a patented design of EP 1,550,387 B1 or the ’919 patent rather than being developed independently based on industry trends and other factors. This is particularly true where the claimed features use prior art elements such as an enclosure member, frame structure, and upright tubes well known in the prior art for baby cribs as illustrated by the prior art baby crib illustrated in Figures 1 and 2 of the ’919 patent itself. The choice of having upright tubes exposed or unexposed is a binary one. Pasin and Stoeckler disclose keder connections in tents and similar play structures with exposed tubes while Vaiano, Miller, Oliphant show baby cribs with exposed tubes. These features are well-known in the art such that the selection of one feature over another involves relatively finite options that could lead to the development of an exposed tube design without copying the Wave Series or the ’919 patent. Nor does development of products with such well-known features provide a strong case for the non-obviousness of the ’919 patent. 3. Conclusion Weighing all of the evidence anew, we determine that Petitioner has” slip op. at 68
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“4. Conclusion For the foregoing reasons, Patent Owner has not, in its Motion to Amend, set forth a prima facie case for the relief requested or satisfied its burden of proof. Consequently, the current situation does not require us to consider Petitioner’s Opposition and Patent Owner’s Reply. Patent Owner’s Contingent Motion to Amend is denied.” slip op. at 88
Patent outcomesUS RE43,919 unpatentable§ 103 obviousnesscites KSR - Baby Trend, Inc. / Denny Tsai et al. v. Wonderland Nurserygoods Co., Ltd.All claims unpatentablePTAB · Jun 27, 2016 · IPR2015-00841 · APJ James P Calve · IPR · Final written decision
Claims 15–29 are unpatentable; the majority found them anticipated or obvious over the asserted prior art, and denied the contingent motion to amend.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“4. Conclusion For the foregoing reasons, Patent Owner has not, in its Motion to Amend, set forth a prima facie case for the relief requested or satisfied its burden of proof. Consequently, the current situation does not require us to consider Petitioner’s Opposition and Patent Owner’s Reply. Patent Owner’s Contingent Motion to Amend is denied.” slip op. at 86
- ExcludeMotion to exclude, deniedDenied
“E. Petitioner’s Motion to Exclude Petitioner moves to exclude testimony of Mr. Drobinski, Ms. Wang,” slip op. at 87
- Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia no nexusDecided for petitioner
“1. Evidence of Commercial Success Patent Owner argues that its Wave Series products are coextensive” slip op. at 48
- Obviousness (§103) › Objective indicia / secondary considerations › CopyingObjective indicia no nexusDecided for petitioner
“have infringed a European patent does not lead inexorably to the conclusion that those products copied a patented design of EP 1,550,387 B1 or the ’919 patent rather than being developed independently based on industry trends and other factors. This is particularly true where the claimed features use prior art elements such as an enclosure member, frame structure, and upright tubes well known in the prior art for baby cribs as illustrated by the prior art baby crib illustrated in Figures 1 and 2 of the ’919 patent itself. The choice of having upright tubes exposed or unexposed is a binary one. Pasin and Stoeckler disclose keder connections in tents and similar play structures with exposed tubes while Vaiano, Miller, Oliphant show baby cribs with exposed tubes. These features are well-known in the art such that the selection of one feature over another involves relatively finite options that could lead to the development of an exposed tube design without copying the Wave Series or the ’919 patent. Nor does development of products with such well-known features provide a strong case for the non-obviousness of the ’919 patent. 3. Conclusion Weighing all of the evidence anew, Petitioner has established the” slip op. at 66
Patent outcomesUS RE43,919 unpatentable§ 103 obviousnesscites KSR - J Squared, Inc. D/B/A University Loft Company v. Sauder Manufacturing CompanySome claims unpatentablePTAB · Jun 27, 2016 · IPR2015-00958 · APJ Linda E Horner · IPR · Final written decision
Claims 1, 2, 8, 9, and 11 are unpatentable as obvious over Yu and Clark; claims 4–7, 10, and 12–14 are not held unpatentable.
RulingsFinal written decision- Skill levelSkill level board ownOther
“J Squared did not proffer a specific level of skill of one of ordinary skill in the art, and relied instead on the prior art to reflect an appropriate level of skill. Tr. 78:15‒20. We find no need for testimony as to the level of skill in the art, as it is demonstrated aptly by the prior art of record. For purpose of this Final Written Decision, we resort to the prior art of record to assess the level of skill of one of ordinary skill in the art. In particular, as discussed below, the prior art provides the suggestion itself for the modification of Yu’s deck chair with the rocker attachment of Clark.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“J Squared asserts that “[i]t would have been obvious to one having ordinary skill in the art at the time of the invention to modify Yu to have rockers as taught by Clark, because Yu discloses a folding chair and Clark discloses a clip-on rocker attachment that is designed specifically to attach to a folding chair.” Pet. 25. J Squared posits that “[a] skilled person would obviously size and position the front clips appropriately to fit onto Yu’s front legs when the rear clips are on Yu’s transverse rear bar,” and that “[w]ith Clark’s rockers attached, Yu’s chair would have base legs that naturally function as rockers when the chair is on the floor.” Id. at 26. J Squared further notes that “[t]he clip-on rocker attachment could be attached indefinitely, i.e., in both the first and second configurations and while changing from one to the other.” Id. J Squared also contends that “[t]he claimed invention is merely a combination of known prior art elements according to known methods to yield predictable results.” Id. We agree with J Squared that there is sufficient motivation found in the references themselves for the proposed combination of teachings from Yu and Clark. Both Yu and Clark are directed to folding deck chairs, and Clark demonstrates that it was desirable at the time of the invention to have a deck chair that is structured to function as a rocking chair. Further, we agree with J Squared that the clip-on rocker attachment of Clark could be attached indefinitely, i.e., in both the first and second configurations and while changing from the office chair configuration to the deck chair configuration. Sauder has not provided persuasive evidence to contradict this finding. We agree with J Squared’s reasoning that the modification of Yu with the rocker rails of Clark is merely a combination of known prior art elements according to known methods to yield predictable results.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“legs of Yu’s foldable deck chair after it has been detached from its pedestal base “would lock the legs in place and prohibit the folding character of Yu’s deck chair that [Yu] deems critical to its intended function.” PO Resp. 24 (citing Ex. 1002, Figs. 5, 6; Ex. 2039, 12:36‒37; Ex. 2072, 80). We disagree with Sauder’s reading of Yu. We find no asserted criticality to the folding aspect of Yu’s deck chair. Instead, we understand Yu to focus on the dual-purpose nature of the chair, serving as both an “office chair” and, when unfastened from the base, the seat structure 10 capable of use as a “deck chair.” Ex. 1002, 1:19‒27, 2:22‒31. Although Figure 6 of Yu depicts the seat structure 10 in a folded configuration, this is nowhere described in Yu as a critical feature of Yu’s chair. Even if the proposed modification were to render the seat structure 10 incapable of being folded, the proposed modification also improves Yu’s seat structure 10 by rendering it capable of being used as a rocker, an improvement that was, as evidenced by Clark, desirable in the art of lawn chairs. See In re Urbanski, 809 F.3d 1237, 1244 (Fed. Cir. 2016) (affirming a determination of obviousness based on motivation of one of ordinary skill to pursue the desirable properties taught by a secondary prior art reference, even at the expense of foregoing a benefit taught by a primary reference). We also disagree with Sauder’s contention that the proposed modification would render Yu’s chair unfit for its intended purpose. PO Resp. 24 (citing In re Gordon, 733 F.2d 900 (Fed. Cir. 1984)). In Gordon, the Board affirmed an examiner’s rejection of a claim directed to a blood filter with an inlet and outlet on the bottom over the prior art, French, which taught a gasoline filter with the inlet and outlet on the top. 733 F.2d at 901. The Board reasoned that “it would have been obvious to turn the French device upside down to have both the inlet and outlet at the bottom, rather than at the top.” Id. at 902. The Federal Circuit reversed, noting that “French teaches a liquid strainer which relies, at least in part, upon the assistance of gravity to separate undesired dirt and water from gasoline and other light oils.” Id. (explaining that “if the French apparatus were turned upside down, it would be rendered inoperable for its intended purpose”). Yu’s chair, as modified to include the rocker attachment of Clark, would still be capable of functioning as a dual purpose chair. Further, Clark provides the motivation to modify Yu’s chair and suggests the desirability of such a modification, and Sauder’s claims do not require the benefit (foldability) of Yu that is arguably lost by modification with the rocker attachment of Clark.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner
“Sauder asserts that the modification is based on impermissible hindsight “because neither Yu nor Clark teaches a non-folding chair or a top chair whose legs function as a rocker.” Id. at 24‒25. Sauder’s claims do not call for a non-folding chair, and Clark discloses the applicability of its rocker attachment to a folding chair, akin to the folding chair of Yu. This disclosure in Clark provides a suggestion in the prior art itself to apply the teachings of Clark to the chair of Yu. As such, impermissible hindsight is not being employed in the proposed combination.” slip op. at 22
Patent outcomesUS 8,585,136 mixed§ 103 obviousnesscites KSRPatents in suitUS 8,585,136
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.