- Apple Inc. v. Qualcomm IncorporatedNo claims unpatentablePTAB · Jan 22, 2020 · IPR2018-01252 · APJ Scott B Howard · IPR · Final written decision
Apple did not prove claims 1–6 and 8–20 unpatentable as obvious over Jin and Elias because it failed to show Jin teaches moving a card with directional contact.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“art include (1) educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case. Id. Moreover, these factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. Ltd, Inc. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“[W]e need only construe those claim limitations ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Because the parties did not request the construction of any limitation and no express constructions are necessary to resolve a controversy, we do not construe any of the limitations. slip op. at 11
- Strike new argumentNew argument disregardedDecided for patent owner
“prima facie case of unpatentability.” Trial Practice Guide Update (August 2018), 14, available at https://www.uspto.gov/sites/default/files/documents/ 2018_Revised_Trial_Practice_Guide.pdf. As the Federal Circuit has explained, [i]t is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify “with particularity” the “evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). “All arguments for the relief requested in a motion must be made in the motion. A reply may only respond to arguments raised in the corresponding opposition or patent owner response.” 37 C.F.R. § 42.23(b). Once the Board identifies new issues presented for the first time in reply, neither this court nor the Board must parse the reply brief to determine which, if any, parts of that brief are responsive and which are improper. As the Board noted, “it will not attempt to sort proper from improper portions of the reply.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012). Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016); see also Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 775 (Fed. Cir. 2018) (quoting same). Based on that standard, the Federal Circuit determined that the PTAB properly refused to consider a new theory raised for the first time in a reply brief:” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“preliminary,” “based on the evidentiary record developed thus far,” and that “[o]ur final decision will be based on the record as fully developed during trial.” Id. at 32. We further advised the parties that we were not “determin[ing] whether an individual asserted fact is indisputable or whether a preponderance of the evidence supports Petitioner.” Id. at 31. Having conducted the trial, for the reasons discussed below, our preliminary finding is not supported by the entirety of the record. Instead, we agree with Patent Owner that Jin does not teach or suggest “directional contact of moving the [selected] card along . . . the touch-sensitive display screen” and agree that the combination of Jin and Elias does not teach or suggest “dismissing the selected first card or second card from the touch-sensitive display screen in the second direction so that the corresponding first application or second application is closed” as recited in claim 1. Specifically, Petitioner has not sufficiently shown that Jin teaches or suggests that the processor responds to directional contact moving the selected card in the second direction on the display screen. Jin’s Figures 9C shows a finger moving along the screen—directional contact. Ex. 1005, Fig. 9C. However, Jin’s Figure 9C does not illustrate the card moving along with the finger. Id. Rather, Jin’s Figure 9E simply shows the cards in a new position without describing what happened on the display while the location of the cards were changed. See id. at Fig. 9E. Accordingly, Petitioner has not proven that Jin teaches directional contact moving the selected card in the second direction on the display screen.” slip op. at 29
Patent outcomesUS 8,683,362 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,683,362 - Apple Inc. v. Qualcomm IncorporatedNo claims unpatentablePTAB · Jan 2, 2020 · IPR2018-01279 · APJ Scott B Howard · IPR · Final written decision
Claims 1–14 and 16–18 were not shown unpatentable because the asserted combinations did not teach composing a message after the incoming call; the contingent motion to amend was dismissed as moot.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“In our Institution Decision, we adopted Petitioner’s formulation. Inst. Dec. 17. Patent Owner does not challenge Petitioner’s formulation. See PO Resp. 12–13; Ex. 2004 ¶ 57 (Jeffay Decl.) (“[F]or the purposes of this declaration, I have applied Petitioner’s proposed level of skill.”). Accordingly, we adopt Petitioner’s proposed level of ordinary skill, except that we delete the qualifier “or more” to eliminate vagueness as to the amount of practical experience. The qualifier expands the range indefinitely without an upper bound, and thus precludes a meaningful indication of the the art would have had either (1) a Master of Science Degree in an academic area emphasizing electrical engineering, computer engineering, computer science, or an equivalent field (or a similar technical Master’s Degree, or higher degree) with a concentration in wireless communication and networking systems or (2) a Bachelor’s Degree (or higher degree) in an academic area emphasizing electrical engineering, computer engineering, or computer science and having two years of experience in wireless communication and networking systems. Moreover, additional education in a relevant field, such as computer engineering, or electrical engineering, or industry experience may compensate for a deficit in one of the other aspects of the requirements stated above.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“recited in claim 1 means generating a message and does not encompass using pre-composed messages. That construction is consistent with the language recited in the claims, the ’037 patent, and the use of “composing” in a related patent. We begin with the words of claim 1. Claim 1 recites “in response to receiving an incoming call, prompting a user of the first computing device to incoming call by composing, while not answering the incoming call, a message to a user of the second computing device.” Ex. 1001, 10:7–11. Based on the ordinary meaning of the claim language, the claim requires prompting a user to enter user input and that the entered user input “instructs the first computing device to handle the incoming call by composing . . . a message.” See id. That is, it is the user input—which itself is in response to an incoming call—which causes the composing to take place. Thus, the language of the claim requires that the composing takes place after the incoming call is received and the user input is entered. Therefore, the language of the claim precludes using content composed prior to the call and user input, i.e., a precomposed message. See Ex. 2004 ¶ 73 (Jeffay Decl.). This construction is also consistent with the written description of the ’037 patent. The ’037 patent describes two different ways of generating messages. First, the ’037 patent describes how a device may be configured to respond to all incoming calls with a precomposed message, such as “on vacation.” Ex. 1001, 5:18–23. However, claim 1 was amended during prosecution to exclude automatically responding with a precomposed message, thus excluding that embodiment from the scope of claim 1. See Ex. 1002, 157 (amendment to claim 1), 165–68 (prosecution history of the ’037 patent) (distinguishing prior art references which automatically responded with a precomposed message); see also Ex. 2004 ¶ 70 (Jeffay Decl.) (“Accordingly, the Applicant amended the claims to distinguish over Brown and clearly disclaimed claim scope corresponding to the embodiments in which an incoming call is automatically responded to with a message.” (citing Ex. 1002, 166–68)). response to a trigger—user input—from the user. See Ex. 1001, 5:24–54, 7:52–8:2, Fig. 4 (step 470 (“address message body”) is after steps 410 (“receive incoming call”) and 435 (“message response?”)). Because the message is generated in response to the user input, it does not exist prior to user input being entered. That is, a precomposed message is not being used.” slip op. at 11
- Strike new argumentNew argument disregardedDecided for patent owner
“Our rules require the Petition to include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” 37 C.F.R. § 42.22(a)(2) (2017). Additionally, the Petition “must identify . . . [h]ow the construed claim is unpatentable under must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4) (2017). Our rules further provide for a petitioner to file a reply to respond to arguments made in the patent owner’s response. See 37 C.F.R. § 42.23(b) (2019). Petitioner choose neither option to set forth its arguments regarding Mäkelä’s claim 28. We decline Petitioner’s invitation to consider arguments presented in papers outside of the Petition and Petitioner’s Reply. We treat Petitioner’s request that we consider arguments only presented in the Opposition to the Motion to Amend as a request for incorporation by reference. However, our rules prohibit “incorporat[ion] by reference from one document into another document.” 37 C.F.R. § 42.6(a)(3) (2019); see also DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (Incorporation “by reference amounts to a self-help increase in the length of the [ ] brief[,]” and “is a pointless imposition on the court’s time. A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”)). Petitioner has not persuasively argued why we should not apply Rule 42.6(a)(3) in these circumstances. See 37 C.F.R. § 42.5(b) (2019) (“The Board may waive or suspend a requirement of parts 1, 41, and 42 and may place conditions on the waiver or suspension.”). Although Petitioner may have intended to make the argument in both Petitioner’s Reply and the Opposition to the Motion to Amend (Tr. 58–59), it did not do so.8” slip op. at 17
- Expert testimonyPetitioner expert discountedDecided for patent owner
“With regard to the merits, we agree with Patent Owner that Petitioner has not sufficiently shown how Mäkelä teaches “composing . . . a message” as recited in claim 1. Neither the Petition nor Petitioner’s Reply specifically addresses when the reply message is prepared. See Pet. 16–17; Pet. Reply 14. Moreover, Dr. Mandayam—Petitioner’s expert witness— conceded that the messages in Mäkelä are composed and stored prior to the incoming call being received: Q. So I think just to repeat the question, is there any disclosure in Mäkelä that the message sent by the user in response to an incoming call is anything other than a message previously stored by the user before the incoming call? Yes or no, please. . . . that have been composed ahead -- previously by the user with the ability to choose them. . . . . Q. The modes of response listed in Claim 27, that is a voice message, an e-mail message, a facsimile, and an SMS message in the form of a character string are all limited to precomposed messages. Do you agree with that? . . . THE WITNESS: So the messages have been composed by the user and stored, as we have gone through this already a few times. So that is stored and composed and resides in the device. And the user is making the choice in response to a call to send whichever their preferred option is. And there is some dynamism if you read through the specifications where there are responses you can fine-tune based on the amount of time you want to be not disturbed or the amount of time your meeting is in session. So there are things like that. But this is the characterization, and I think this is something I agree. . . . Q. So I think we agree that the user selects a message that is to be transmitted in response to an incoming call. The question is would you agree that in Mäkelä the user’s selection of the message in response to an incoming call is limited to precomposed messages? . . .” slip op. at 19
Patent outcomesUS 7,844,037 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,844,037 - Google LLC v. Alex Is The Best, LLCRehearing deniedPTAB · Mar 18, 2019 · IPR2017-02058 · APJ Minn Chung · IPR · Rehearing
The Board denied Google’s rehearing request and left in place the denial of institution for claims 1–3, 10–14, and 21 because the Petition did not sufficiently show the cited references taught the claimed limitations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision,” and the challenging party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d). Because Petitioner seeks rehearing of our Decision denying institution of trial based on the Petition, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“certain teachings in Inoue about the claimed “WSARC.” Req. Reh’g 3. In the Decision, we found that, although the Petition appears to map Inoue’s file server to the claimed “WSARC” by mentioning “WSARC (Inoue’s file server)” (Dec. 16–17 (citing Pet. 17)), aside from that single mention, the Petition does not discuss the term “WSARC” or “website archive and review center” in relation to Inoue, and does not explain adequately why Inoue’s file server teaches or suggests the “WSARC” recited in the claims (id. at 17, 19 (citing Pet. 15–18)). Thus, based on the record presented, we determined that simply stating “a WSARC (Inoue’s file server)” in the Petition without any elaboration does not satisfy Petitioner’s burden required for institution of a review in this case (id. at 19–20 (citations omitted)).” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“At best, Petitioner’s arguments in its Request for Rehearing attempt to remedy the deficiencies in the Petition our Decision identified, by supplementing the arguments in the Petition. A request for rehearing is not a supplemental petition. Nor is it an opportunity to present new arguments or evidence that could have been presented and developed in the first instance in the Petition. As explained in the Decision (Dec. 19–20), it was Petitioner’s burden “from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (emphases added) (citing 35 U.S.C. § 312(a)(3)); see Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“[T]he expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute.” (emphases added)). The record shows that, rather than overlooking any teachings of Inoue or any “background” discussion by Dr. Madisetti, the Decision simply considered the arguments and explanations of the evidence Petitioner presented in the four corners of the Petition, and properly determined that the Petition did not meet this burden required on Petitioner. Dec. 19–20.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“certain teachings in Inoue about the claimed “WSARC.” Req. Reh’g 3. In the Decision, we found that, although the Petition appears to map Inoue’s file server to the claimed “WSARC” by mentioning “WSARC (Inoue’s file server)” (Dec. 16–17 (citing Pet. 17)), aside from that single mention, the Petition does not discuss the term “WSARC” or “website archive and review center” in relation to Inoue, and does not explain adequately why Inoue’s file server teaches or suggests the “WSARC” recited in the claims (id. at 17, 19 (citing Pet. 15–18)). Thus, based on the record presented, we determined that simply stating “a WSARC (Inoue’s file server)” in the Petition without any elaboration does not satisfy Petitioner’s burden required for institution of a review in this case (id. at 19–20 (citations omitted)).” slip op. at 3
§ 103 obviousnessPatents in suitUS 8,581,991 - Apple Inc. v. Saint Lawrence Communications, LLCInstitution deniedPTAB · Oct 25, 2017 · IPR2017-01244 · APJ Daniel N Fishman · IPR · Institution
The Board denied institution because Apple did not show a reasonable likelihood that claims 1–21 and 29–42 were unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For at least the above reasons, we are not persuaded that Petitioner has established a reasonable likelihood that it would prevail in showing any of claims 1, 8, 15, 29, and 36 are unpatentable as obvious over the proposed combination of Salami and Kroon.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“encoding device of, for example, claim 1. However, we agree with Patent Owner that Salami does not disclose that the preemphasized input speech signal is used as an input to a perceptual weighting filter as recited in claim 1. See PO Resp. 35–37. Specifically, claim 1 specifies both the synthesis filter calculator and the perceptual weighting filter are responsive to the preemphasized signal generated by the preemphasis filter, which is, in turn, responsive to the input wideband speech signal, and further specifies that the perceptual weighting filter is also responsive to the coefficients generated by the synthesis filter calculator. In other words, the claim requires an arrangement of the various elements of an encoder in which the output of the preemphasis filter (the preemphasized signal) is applied to the synthesis filter calculator and applied to the perceptual weighting filter, and the coefficients generated by the synthesis filter calculator are applied to the perceptual weighting filter. An excerpt of Figure 1 of the ’524 patent, reproduced below, shows a block diagram of relevant portions of such an encoder arrangement. The above excerpt of Figure 1 of the ’524 patent depicts preemphasis filter 103, coupled to receive wideband speech signals (“Sp”) and configured to generate preemphasized speech signal (“S”). Ex. 1001, 7:64–8:18. The output of preemphasis filter 103 (“S”) is applied to LP analysis quantization and interpolation calculator 104 and perceptual weighting filter 105. Id. at 8:19–9:45. Petitioner directs us to no disclosure in Salami of such an arrangement of filters in an encoding device.” slip op. at 17
- BurdenInstitution denied
“Ex. 1008, 23. We discern no teaching or suggestion in this text of Salami that the preemphasized signal is used on a perceptual weighting filter. We find no support in the cited portions of Salami for Petitioner’s assertion that the preemphasized signal is first applied to LP analysis and then the same preemphasized signal is perceptually weighted (i.e., applied to a perceptually weighted filter). Petitioner’s argument in the Petition does not explain specifically how the cited text teaches the identified claim limitations and, thus, amounts to little more than an unsupported conclusory remark. Dr. Cohen merely repeats the same argument without providing any further explanation. Ex. 1003, 65 (the portion of the claim chart of paragraph 114 for this element of claim 1).” slip op. at 19
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,807,524 - Smart Microwave Sensors GmbH v. Wavetronix LLCAll claims unpatentablePTAB · Jul 17, 2017 · IPR2016-00488 · APJ Daniel N Fishman · IPR · Final written decision
Claims 9, 10, 12, 13, 22, 23, and 25 are unpatentable, including as anticipated by Boles or Farmer and obvious over combinations including Boles, Farmer, Herman, and others.
RulingsFinal written decision- ExcludeMotion to exclude, grantedGranted
“1. Exhibits 1002, 1008, 1009, and 1012 Patent Owner argues the date printed on each of Exhibits 1002, 1008, 1009, and 1012, is inadmissible hearsay under FRE 801 and 802 as out of court statement offered to prove that truth of the matter asserted—that each document was a printed publication as of the date printed on that document (i.e., that it was sufficiently publicly accessible). Paper 45, 2–3 (citing Standard Innovation Corp. v. Lelo, Inc., Case IPR2014-00148, Paper 41 (PTAB April 23, 2015)). As discussed supra, we agree with Patent Owner that the dates printed on these Exhibits are hearsay with no applicable exception. Thus, we grant Patent Owner’s motion requesting that we exclude the copyright notice date from each of Exhibits 1008, 1009, and 1012, and exclude the date of the EuMC conference on Exhibit 1002. However, we note that the documents per se are not excluded from the record as hearsay—only the date imprinted on each as proof of the printed publication status of each document. The underlying documents of these Exhibits are offered not to prove the publication dates thereof but, instead, are statements offered to demonstrate the knowledge of persons of ordinary skill in the art. Petitioner may rely on other evidence to establish the date of public accessibility of each of these documents, the analysis of which we have set forth supra. See Section II.B.1–4.” slip op. at 54
- Skill levelNot reached
- Expert testimonyPatent owner expert discountedDecided for patent owner
“data about multiple vehicles on a particular section of roadway (PO Resp. 7– 8), Petitioner counters by identifying references in the field of traffic engineering that use mobile sensors (i.e., not at a fixed location) for acquiring “traffic data.” Pet. Reply 2 (citing Ex. 1031 ¶¶ 6, 22, 181–183). Referring to pages 7–13 of Exhibit 1031 (Texas Highway Operations Manual discussing “Vehicle-based Equipment”), Patent Owner’s expert testified, on cross-examination, as follows: Q In view of the paragraph, would it be accurate to note that one of ordinary skill in the art would understand that the equipment located in a vehicle can be used to measure the speed of the traffic stream? A It says that a vehicle-mounted radar unit can be used to measure the timing speed of other vehicles in the traffic stream. It does not say it is used to measure the traffic stream. Q I said measure the speed of the traffic. A Yes. This says it is measuring the speed of vehicles in the traffic stream. Q So one of ordinary skill in the art would understand that the equipment located in a vehicle can be used to measure the speed of vehicles in a traffic stream? A That is how it’s worded, the speed of other vehicles in the traffic stream. Ex. 1036, 98:21–99:13. In light of that testimony, we determine that Patent Owner’s expert testimony in support of their assertion is not credible.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Id. at 49:19–50:10. Given, at best, significant ambiguity as to whether the Specification and other evidence requires that “traffic data” must refer to “all or substantially all vehicles,” we are persuaded that such a requirement would not be proper under a broadest reasonable construction. Regarding Patent Owner’s assertion that “traffic data” is limited to data about multiple vehicles on a particular section of roadway (PO Resp. 7– 8), Petitioner counters by identifying references in the field of traffic engineering that use mobile sensors (i.e., not at a fixed location) for acquiring “traffic data.” Pet. Reply 2 (citing Ex. 1031 ¶¶ 6, 22, 181–183). Referring to pages 7–13 of Exhibit 1031 (Texas Highway Operations Manual discussing “Vehicle-based Equipment”), Patent Owner’s expert testified, on cross-examination, as follows: Q In view of the paragraph, would it be accurate to note that one of ordinary skill in the art would understand that the equipment located in a vehicle can be used to measure the speed of the traffic stream? A It says that a vehicle-mounted radar unit can be used to measure the timing speed of other vehicles in the traffic stream. It does not say it is used to measure the traffic stream. Q I said measure the speed of the traffic. A Yes. This says it is measuring the speed of vehicles in the traffic stream. Q So one of ordinary skill in the art would understand that the equipment located in a vehicle can be used to measure the speed of vehicles in a traffic stream? A That is how it’s worded, the speed of other vehicles in the traffic stream.” slip op. at 14
Patent outcomesUS 6,693,557 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,693,557 - 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
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.