• Inari Agriculture, Inc. v. Corteva Agriscience LLCNo claims unpatentable
  PTAB · Nov 18, 2025 · IPR2024-01014 · APJ Zhenyu Yang · IPR · Final written decision

  Petitioner did not show claims 1–8 unpatentable because they are entitled to the 2004 priority date, making Barbour unavailable as prior art.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Entitled to earlier dateDecided for patent owner

    “For a claim to a biological material, the enablement requirement of § 112, first paragraph, does not require such assured access to a microorganism deposit as of the filing date; what is required is assurance of access (to the microorganism culture by the public upon issuance of a patent on the application) prior to or during the pendency of the application, so that, upon issuance of a U. S. patent on the application, the public will, in fact, receive something in return for the patent grant. Feldman, 517 F.2d at 1355. Patent Owner has persuaded us that such exception not only applies to a deposit, but also extends to a biological material known and readily available. See 52 Fed. Reg. 34080, 34081. In this case, it is undisputed that TC1507 germplasm was known and readily available to the public by Barbour’s publication date in 2006 (Pet. 49–53), years before the 2014 issuance date of the ’378 patent (Ex. 1001, code 45). Thus, based on the record developed through trial, we agree with Patent Owner that the 2004 application satisfies the enablement requirement as of its application date in 2004. PO Resp. 16–18 (citing 52 Fed. Reg. 34080, 34081). As a result, the challenged claims are entitled to the 2004 priority date and, thus, Barbour does not qualify as prior art.” slip op. at 15

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “In this case, it is undisputed that TC1507 germplasm was known and readily available to the public by Barbour’s publication date in 2006 (Pet. 49–53), years before the 2014 issuance date of the ’378 patent (Ex. 1001, code 45). Thus, based on the record developed through trial, we agree with Patent Owner that the 2004 application satisfies the enablement requirement as of its application date in 2004. PO Resp. 16–18 (citing 52 Fed. Reg. 34080, 34081). As a result, the challenged claims are entitled to the 2004 priority date and, thus, Barbour does not qualify as prior art. Because all of Petitioner’s challenges rely on Barbour (Pet. 6), all those challenges fail.” slip op. at 15

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable

    “In this case, it is undisputed that TC1507 germplasm was known and readily available to the public by Barbour’s publication date in 2006 (Pet. 49–53), years before the 2014 issuance date of the ’378 patent (Ex. 1001, code 45). Thus, based on the record developed through trial, we agree with Patent Owner that the 2004 application satisfies the enablement requirement as of its application date in 2004. PO Resp. 16–18 (citing 52 Fed. Reg. 34080, 34081). As a result, the challenged claims are entitled to the 2004 priority date and, thus, Barbour does not qualify as prior art. Because all of Petitioner’s challenges rely on Barbour (Pet. 6), all those challenges fail.” slip op. at 15

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

    “would understand that the term “‘flanked by’ permits overlap between the expression cassette and the DNA sequence it is flanked by.” Pet. 24–26. Patent Owner does not propose any claim construction. PO Resp. 6–7. On this record and for purposes of this Decision, we see no need to expressly construe any claim term.” slip op. at 9

  Patent outcomesUS 8,901,378 not shown unpatentable
  Claim construction§ 102 anticipation§ 112 disclosurecites Phillips
  Patents in suitUS 8,901,378
• The Boeing Company v. The Regents Of The University Of CaliforniaNo claims unpatentable
  PTAB · Oct 2, 2025 · IPR2024-00761 · APJ Alyssa A Finamore · IPR · Final written decision

  The Board held claims 1–24 not unpatentable because the asserted references did not show the glass element propagating a modified stress wave to generate tensile stress at the interface.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner asserts that a person of ordinary skill in the art (“POSITA”) at the time of the invention of the ’684 patent “would have had an M.S. in Mechanical Engineering or a related field, and at least five years of experience using laser systems to characterize and test mechanical behavior in materials” and that “[m]ore education may supplement practical experience or vice versa.” Pet. 5 (citing Ex. 1003 ¶ 38). Patent Owner” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for patent owner

    “Both parties maintain that no claim term needs to be construed. Pet. 4 (citing Ex. 1003 ¶ 40); PO Resp. 20. Patent Owner, however, provides an express construction for limitation [1.d] of independent claim 1 and the similar limitation of independent claim 13, namely limitation [13.c]. PO Resp. 20 (citing Ex. 2011 ¶ 25). To resolve the controversy before us, we determine that these limitations require express construction. 1. “the glass element is configured to propagate and modify a stress wave to the coating/substrate interface to generate a tensile stress between the substrate and the coating” (limitation [1.d]) and “propagating and modifying a stress wave through the glass element to the coating/substrate interface to generate a tensile force between the substrate and the coating” (limitation [13.c]) Patent Owner argues these limitations mean “changing the profile of the laser generated compressive wave and propagating the wave profile as modified to the free surface of the coating, which upon reflection from the free surface as a tension wave generates a tensile stress at the coating/substrate interface.” PO Resp. 20 (citing Ex. 2011 ¶ 25). Petitioner does not refute this proposed construction and, during the oral argument, Petitioner confirmed it agrees with the proposed construction. Tr. 8:16–9:12. We so no reason to depart from the parties agreed-upon construction of limitations [1.d] and [13.c]. Accordingly, for purposes of this Final Written Decision, we adopt the parties’ construction of limitations [1.d] and [13.c].” slip op. at 10

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

    “a shock in the compression wave in the fused silica substrate. Even if we were to agree with Petitioner that Wang-Dissertation’s fused silica substrate modifies the compression waveform, we would not be persuaded that the fused silica substrate propagates the modified wave to the free surface of the coating, which upon reflection from the free surface as a tension wave generates a tensile stress at the coating/substrate interface, as limitation [1.d] requires. In view of the presence of tension-wave-1 in Wang-Dissertation’s experiments, we find Petitioner has not demonstrated persuasively that the fused silica substrate propagates a modified stress wave to the free surface of the coating to generate a tensile stress at the coating/substrate interface. Also, we find credible Dr. Gupta’s unrebutted testimony that any modified compression wave would attenuate in the substrate and not propagate to the free surface coating or generate a tensile stress at the coating/substrate interface. Ex. 2011 ¶¶ 93–98. Petitioner does not dispute that the experiments in Wang-Dissertation include tension-wave-1. See Ex. 1005, 65 (“The experimental picture is complicated somewhat by the presence of a tensile wave, reflected from the back of the confining layer.”). Nor does Petitioner dispute that Wang-Dissertation discloses that the tension-wave-1 propagates faster than the compression-wave-1 and eventually overtakes compression-wave-1. See id. at 65–66 (“Being tensile, it propagates faster that the peak compressive stress, and faster than the low stress tail of the main pulse. It eventually overtakes the compressive pulse and linear dissipative mechanisms govern the final thickness of the shock.”). Rather, Petitioner relies on Dr. Wang’s testimony regarding the timing of the waves through the sample and argues that tension-wave-1 does not overtake compression-wave-1 in the fused silica substrate. Pet. Reply 17 (citing Ex. 1038 ¶ 5). Dr. Wang testifies that the peak stress from tension-wave-1 is about 2 ns behind the peak of compression-wave-1 and will not reach the interface before the reflected tensile peak of compression-wave-1 reaches the interface in 0.3 ns. Ex. 1038 ¶ 5. However, as Dr. Gupta persuasively explains, the delay between tension-wave-1 and compression-wave-1 depends on the properties of the confining layer, and Wang-Dissertation acknowledges that these properties are not well controlled. Ex. 2011 ¶ 54; see also Ex. 1005, 65 (“The surface properties of that confining layer are not well controlled.”).” slip op. at 19

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “claimed subject matter. Pet. 35–38; Pet. Reply 23–24. In doing so, Petitioner continues to rely on Wang-Dissertation to disclose limitation [1.d] of independent claim 1 and limitation [13.c] of independent claim 13. Pet. 35–38; Pet. Reply 23–24. Petitioner does not put forth any further obviousness rationale in this ground based on Wang-Dissertation for teaching these limitations. For the same reasons discussed in sections II.C.2–3, Petitioner has not persuaded us that Wang-Dissertation teaches or suggests limitations [1.d] and [13.c]. Thus, Petitioner has not shown, by a preponderance of the evidence, that Wang-Dissertation renders obvious the subject matter set forth in claims 4, 6, 9, 15, 17, 20, 23, and 24, which depend from independent claims 1 and 13.” slip op. at 24

  Patent outcomesUS 7,487,684 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 7,487,684
• Duration Media LLC v. Rich Media Club LLCNo claims unpatentable
  PTAB · Aug 19, 2024 · IPR2023-00953 · APJ Michael J Fitzpatrick · IPR · Final written decision

  Claims 1–10 were not proven unpatentable under either §103 ground because the evidence did not show the claimed viewability determination.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We find Patent Owner’s argument persuasive. Indeed, it is unclear how Petitioner’s proposal accounts for the types of problems encountered in the art or prior art solutions to those problems. See Daiichi Sankyo, 501 F.3d at 1256 (identifying these factors, among others, as “a guide to determining the level of ordinary skill in the art”). Nor does Petitioner, in its Reply, address, let alone rebut, Patent Owner’s arguments that a person of ordinary skill in the art would have had some experience and/or knowledge in internet advertising. See generally Pet. Reply. Patent Owner proposes that a “person of ordinary skill in the art would have a bachelor’s degree in computer science or a similar major involving computer programming (or at least four years of practical computer programming experience) and at least two years of experience (in or out of college) in the field of internet advertising.” PO Resp. 12 (citing Ex. 2045 ¶54). We agree that a person of ordinary skill in the art would have some experience in internet advertising, although we fail to see why one year would not be enough to familiarize sufficiently a computer scientist and/or programmer with the types of problems encountered in the art or prior art solutions to those problems. Based on the competing proposals, arguments, and evidence before us, we adopt and apply the following level of skill in assessing Petitioner’s challenges to the patentability of the claims of the ’329 patent: a person that would have had a bachelor’s degree in computer science, computer engineering, or electrical (or similar) engineering with about three years of experience being in the field of internet advertising.” slip op. at 10

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner

    “Petitioner’s resurrected argument is based on a fundamental misunderstanding of § 311(b). Section 311(b) provides: “A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed cancel the claims of the ’329 patent on the basis of Badros, Harkins, and Krassner. Pet. 11. Petitioner did not base its request, in whole or in part, on the Krassner publication. Id. Krassner clearly is a patent. It issued on August 13, 2019, far too late to be § 102(b) prior art. Even if we assume Krassner is also a “printed publication” withing the meaning of § 311(b), the same date would apply: August 13, 2019. Petitioner has not presented any evidence that the document that is Krassner was published prior to when it issued on August 13, 2019. That another document (the Krassner publication), which published much earlier, may contain the same or similar disclosure is not relevant to when Krassner was patented or published. In sum, Krassner is not prior art under 35 U.S.C. § 102(b). b) Whether Krassner is Prior Art Under 35 U.S.C. § 102(e) Although Krassner is not prior under 35 U.S.C.§ 102(b), we” slip op. at 13

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “Petitioner responds that, contrary to Patent Owner’s argument, “Harkins teaches that its invention can be used in web pages.” Pet. Reply 18 (citing Ex. 1004 ¶30). Although Petitioner’s citation is off by one paragraph, Petitioner’s response about what Harkins teaches is correct. See Ex. 1004 ¶29 (“The present invention may be implemented for provision of virtually any type of advertising (e.g., print, radio, television, Internet, billboard, etc.) via any type of advertising medium (e.g., newspaper, magazine, radio broadcast, Web pages, billboards, etc.) without departing from the scope of the present invention.”). We find that Harkins is from the same field based on its express statement that it is applicable to “virtually any type of advertising” and “any type of advertising medium,” including “Web pages.” Ex. 1004 ¶29. Further, even if this were insufficient to place Harkins in the same field as the ’329 patent, we find that Harkins is reasonably pertinent to the particular problems with which the ’329 patent inventors were involved. In sum, we find that Harkins is analogous art to the ’329 patent.” slip op. at 19

  • Strike new argumentNew argument disregardedGranted

    “Paper 60 (“PO Mot. To Exclude”), 9–10.6 Patent Owner is correct in this regard and, thus, we grant Patent Owner’s Motion to Exclude with respect to the testimony in the second Smedley Declaration and the Madansky Declaration opining that Badros teaches the determination limitation. Paper 60, 9–12. Petitioner, in its Opposition to the Motion to Exclude, argues that Patent Owner’s arguments about the “viewability test” were “surprising.” Paper 62, 8. We are not persuaded by Petitioner’s argument. The “viewability test” is a claim limitation. Petitioner should have anticipated that Patent Owner would argue that limitation. See In re Gardner, 449 F. App’x 914, 916 (Fed. Cir. 2011) (“This court has held that when evaluating claims for obviousness under 35 U.S.C. § 103, all the limitations of the claims must be considered and given weight.” (citing Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Cir. 1983)); Univ. of Strathclyde v. 6 Patent Owner’s Motion to Exclude seeks to exclude, in part or in whole, Exhibits 1020–1022, 1025–1030, and 1034–1040, which were submitted with Petitioner’s Reply, of which Exhibits 1026 and 1027 are the declaration by Dr. Madansky and the second declaration by Dr. Smedley, respectively. Mot. To Exclude. The Motion to Exclude also seeks to exclude “Exhibits” 1017 and 1018, which are not filed or of record in this case but which are referenced in the Reply. Id. For example, Exhibit 1017 is the Krassner publication, which Petitioner unsuccessfully moved to add to the record as supplemental information. See Paper 21, 3 n.1 (expunging the Krassner publication and stating that it “need not -- and indeed may not -- be re-filed under a new exhibit number”). Apart from the portions of Dr. Smedley’s second declaration and Dr. Madansky’s declaration opining that Badros teaches the “determination” limitation, we dismiss the Motion to Exclude as moot. obviousness determination generally requires a finding that “all claimed limitations are disclosed in the prior art’.” (citing PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1194 (Fed. Cir. 2014)). Petitioner argues that “[v]iewability tests were well known for well over a decade prior to the ’329 patent’s priority date.” Reply 9. If that were the case, then Petitioner should have made its argument in the Petition. Section 312(a) of Title 35 is titled “Requirements of Petition,” and it specifies that a petition must identify, among other things, “the evidence that supports the grounds for the challenge to each claim, including . . . (B) affidavits or declarations of supporting evidence and opinions, if the petitioner relies on expert opinions.” 35 U.S.C. § 312(a)(3); see also 37 C.F.R. § 42.104(b)(4)–(5) (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon; and . . . the supporting evidence relied upon to support the challenge.”). Thus, “Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.” Board’s Consolidated Trial Practice Guide, 73 (Nov. 21, 2019).7 Dr. Smedley’s testimony in his second declaration, that “Badros discloses Patent Owner’s ‘viewability test’” (Ex. 1027 ¶11), is clearly evidence to make out a prima facie case of unpatentability. The same is true of Dr. Madansky’s testimony that she agrees with Dr. Smedley in this regard. Ex. 1026 ¶4.” slip op. at 25

  Patent outcomesUS 11,443,329 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 11,443,329
• Apple Inc. / Snap Inc. et al. v. Uniloc Luxembourg S.A.No claims unpatentable
  PTAB · May 23, 2018 · IPR2017-00225 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–6 and 8 were not shown unpatentable because the Petition did not establish a persuasive reason to add a client-side message database to the asserted prior-art combinations.

  RulingsFinal written decision

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

    “We do not agree with Petitioner. Although the ’433 patent Specification provides for a message database at the transport server, that database is for storing the messages of the one or more recipients that are not available, and, therefore, cannot receive instant voice messages. Ex. 1001, 22:5363. When a user becomes available, database (storage) manager 710 retrieves the undelivered instant voice messages from the database, and client manager 706 delivers the messages to the designated, now available, recipients. Id. Thus, message database 710 at the transport server stores and retrieves instant voice messages upon command from the client manager 706, whereas message database 310, of Figure 3, stores and retrieves instant voice messages upon command of file manager 308. This distinction is significant because claims 1 and 6 directly link the recited “message database” to the “file manager,” and no other component of the disclosed system. Further, the recited “file manager” performs the “storing,” for example, “in response to a user request,” according to the claim language of claims 1 and 6. The ’433 patent Specification lacks any description of the transport server’s message database or database manager storing instant voice messages in response to a user request. Indeed, the transport server does not store instant voice messages in the database in response to a user’s request, because it only stores messages in the database when the recipient is unavailable. In fact, the message database of the transport server stores messages at the request of client manager 706, and on condition that a recipient is not available. Ex. 1001, 22:5363; see also id. at 8:3843 (describing the local server in a similar manner, delivering messages to the available recipients and temporarily storing the instant voice messages for unavailable recipients). Further, the Specification contains no disclosure of “distributed” applications or programs or any other indication that the “instant voice messaging application” is a “distributed” application with components placed throughout the system (at clients and servers). Petitioner’s reliance on Figure 7 as supporting the contention of a “distributed” application, as discussed above, is unavailing. Other than having the same name, the message database of the transport servers (Figure 7) is a different message database from the one recited in claims 1 and 6 and described in Figure 3.” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner’s proffered level of ordinary skill in the art focuses too generally on experience in “communications technology.” The enunciation of such experience is too generic to be useful in determining the level of ordinary skill in the art under any of the GPAC factors. For instance, experience with “communications technology” is untethered to addressing problems and solutions in facilitating short messaging services, such as in Vuori, or to whether active workers in the appropriate field would manifest such a general experience in “communications technology.” Vuori, for instance, focuses on facilitating short messaging service in the context of a wireless telecommunication network. See Ex. 1005 ¶¶ 57. Therefore, we cannot ignore that the field of work would be more narrow than generally “communications technology.” We find that Petitioner’s assessment is proper and consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For example, Vuori (Ex. 1009) is directed to an instant messaging system in the context of telecommunication and computer networks, such as a Global System for Mobile Communications (“GSM”), General Packet Radio Service (“GPRS”), Universal Mobile Telecommunication Systems (“UMTS”), and the Internet. Ex. 1005 ¶¶ 3539, Figs. 3, 6; see also Ex. 1005 ¶¶ 14 (addressing messaging systems that use the Internet as a telecommunication and/or computer network). Thus, it is evident from the prior art that Petitioner’s assessment is appropriate because, in addition to a certain degree, a person of ordinary skill in the art would have experience in communications systems, particularly in messaging systems, data networks including VoIP and mobile telephony, or comparable industry experience. Consequently, we adopt Petitioner’s assessment of the level of ordinary skill in the art.” slip op. at 23

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “We find Petitioner’s rationale wanting. Petitioner proffers expert testimony of a reason to combine: “to improve the organization and retrieval of audio messages stored on a user’s device.” Ex. 1003 ¶ 109. Dr. Forys also states that “it would have been obvious to incorporate Holtzberg’s database structure into Abburi because such incorporation amounts to nothing more than applying a known technique (e.g., storing voice messages in a database) to a known device (e.g. the message recipient’s device in Abburi) ready for improvement to yield predictable results (a user device storing audio messages in a database).” Id. None of the proffered testimony is persuasive, and because it is not supported by either explanation or supporting facts, we give it little to no weight. 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.”). First, there is no explanation as to why a person of ordinary skill in the art would either de-centralize Abburi or relocate the database in Holtzberg to achieve the “user device storing audio messages in a database.” Dr. Forys’s conclusion that the claimed message database would have been obvious is unexplained and belies the specific teachings in both Abburi and Holtzberg that rely on the architecture of their systems as having centralized storage. Without “a reasoned explanation that avoids conclusory generalizations,” Dr. Forys’s testimony is not sufficient. See Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016) (quoting Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009)).” slip op. at 34

  • Strike new argumentNew argument disregardedDecided for patent owner

    “provides “specifics of how and why” Holtzberg is integrated into the system of Abburi. Reply 15. The argument and citations are not persuasive. The Reply Forys Declaration (Ex. 1019 ¶¶ 1214) provides new reasons for a motivation to combine (for example, motivation to provide storage at both the client and server for sent and received messages). This testimony does not just explain the rationale provided in the Petition (focused on incorporation of Holtzberg’s database at the user device of Abburi). Rather, Dr. Forys’s reply explanation provides an expanded rationale that is different from the rationale stated in the Petition. For example, Dr. Forys opines that a person of ordinary skill in the art “would understand that the communication link between the user device and the server system may be down or disrupted from time to time, and the recorded audio messages to be sent to the system must be stored until communication is reestablished.” Ex. 1019 ¶ 13. Dr. Forys’s opinion does not respond appropriately to the argument by Patent Owner that the teachings of Abburi and Holtzberg would have led away from incorporating a database at the client device. Rather, the reply opinion testimony diverges from the Petition’s rationale of improving organization and retrieval of audio at the client device. Put another way, the reasoning of redundancy of storage to account for communication failures between the server and the client is another rationale—different and distinct from the rationale asserted in the Petition.3 The Reply is not responsive to the teaching away argument, and it has come too late in the proceeding. See 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the corresponding opposition or patent owner response”); Office Trial Practice 3 We find the further reasons in the Reply Forys Declaration similarly problematic. For instance, Dr. Forys opines that it would be convenient to playback older messages to recall their content, and would enable the user to track messages and avoid repeated queries to the audio message store. Ex. 1019 ¶ 13. Again, the Petition and the First Forys Declaration neither state nor explain a rationale based on convenience of local storage or of conservation of server resources. Indeed, the only reason or explanation timely provided addresses the generic benefit of organization and retrieval of data. Pet. 29. Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) (“While replies can help crystalize issues for decision, a reply that raises a new issue or belatedly presents evidence will not be considered and may be returned.”). Accordingly, we will not consider the new theories of obviousness in the Reply and Reply Forys Declaration. See Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367–68 (Fed. Cir. 2015) (finding reasonable the Board’s judgment about when a Reply contention crosses the line from the responsive to the new); see also Tr. 89:590:5 (counsel for Petitioner offering argument regarding whether Reply falls outside the permissible scope and responding that “you could eliminate our petitioner reply entirely and we still think that there is a complete showing that all claim elements are rendered obvious under all five grounds, both combinations”).” slip op. at 37

  Patent outcomesUS 8,995,433 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,995,433
• Adidas AG v. Nike, Inc.No claims unpatentable
  PTAB · Oct 19, 2017 · IPR2016-00922 · APJ James B Arpin · IPR · Final written decision

  Petitioner failed to prove claims 1–9, 11–19, and 21 unpatentable as obvious over Reed and Nishida because it did not adequately explain why a skilled artisan would combine their teachings.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “appropriate factors identified by our reviewing court and utilized by other panels to assess the level of ordinary skill in the art. Id. at 17–18. We agree with Petitioner that it is not necessary to consider every factor or to weigh the factors equally in order to assess the level of ordinary skill in the art. Reply 2 (quoting In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)). Here, we may rely on Petitioner’s declarant’s testimony (Ex. 1003 ¶ 34) and the teachings of the prior art to evaluate Petitioner’s assessment of the level of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). In particular, Reed and Nishida identify the types of problems encountered in the art prior art solutions to these problems, and the sophistication of the technology. E.g., Ex. 1006, 1:13–55; Ex. 1009, 1:10– 36; see, e.g., Ex. 1007, 1:8–32, 2:12–64; Ex. 1008, 1:11–54; Ex. 1010, 145– 160; see also Ex. 1010, Preface (“The aim of this book is to combine in a single volume the fundamental principles of weft and warp knitting in such a manner that its contents are useful to readers in education, industry or commerce. It thus [fulfills] the long felt need for a comprehensive up-to-date textbook explaining this important sector of textile technology.”).” slip op. at 10

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

    “unitary construction” means “a textile element having a unitary construction and having a first area and a second area.” Pet. 6. As Petitioner notes, this is the construction that this panel gave to the same term appearing in the substitute claims of the ’011 patent. adidas AG v. Nike, Inc., Case IPR2013- 00067, slip op. at 16–17 (PTAB Apr. 28, 2014) (Paper 60). We further note that the ’749 patent’s Specification provides that “[a]s defined for purposes of the present invention, unitary construction is intended to express a configuration wherein portions of a textile element are not joined together by seams or other connections, as depicted with textile element 40 in FIG. 8.” Ex. 1001, 6:42–46 (emphasis added); see IPR2013-00067, Ex. 1002, 6:41–46 (identical disclosure). The ’011 patent and the ’749 patent share the same Specification (apart from their claims), neither party contested our construction of this term in the appeal of our decision in the inter partes review of the claims of the ’011 patent, and Patent Owner does not contest Petitioner’s proposed construction of this term in this proceeding. Therefore, in view of the express definition of the phrase “unitary construction” in the Specification of the ’749 patent, we adopt Petitioner’s proposed construction as the broadest reasonable interpretation for this term. See Tr. 20:5–13, 37:11–17.” slip op. at 12

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

    “2. “wide-tube circular knitting machine” (Claims 9 and 19) We determine that the broadest reasonable interpretation of the term “wide-tube circular knitting machine” is “a circular knitting machine forming body garment sized, tubular textile structures, including those having a diameter that ranges from 10 inches to 20 inches.” See Inst. Dec. 9–11. Neither party contests this construction. See Tr. 20:5–13, 37:11–17.” slip op. at 13

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “8 Patent Owner contends that Reed is not analogous art. PO Resp. 34–36. In particular, Patent Owner contends that Reed is not from the same field of endeavor as the challenged claims and that Reed’s teachings are not reasonably pertinent to the particular problem with which the recited methods are involved. Id. at 34–35. Because Reed is directed to the manufacture of all types of garments, including footwear (Reply 12–13; see Ex. 1006, 1:33–44), and Reed is related directly to preparation of garments layouts from a knitted textile structure (Reply 14–15; see Ex. 1006, 2:29– 35), we are persuaded that Reed is analogous art to the challenged claims.” slip op. at 18

  Patent outcomesUS 8,266,749 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,266,749
• Adidas AG v. Nike, Inc.No claims unpatentable
  PTAB · Oct 19, 2017 · IPR2016-00921 · APJ James B Arpin · IPR · Final written decision

  Petitioner failed to prove claims 1–13 unpatentable as obvious over Reed and Nishida because it did not show a reason to combine their teachings.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Initially, Patent Owner contends that Petitioner has failed to consider appropriate factors identified by our reviewing court and utilized by other panels to assess the level of ordinary skill in the art. Id. at 12–13. We agree with Petitioner that it is not necessary to consider every factor or to weigh the factors equally in order to assess the level of ordinary skill in the art. Reply 2 (quoting In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)). Here, we may rely on Petitioner’s declarant’s testimony (Ex. 1003 ¶ 34) and the teachings of the prior art to evaluate Petitioner’s assessment of the level of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). In particular, Reed and Nishida identify the types of problems encountered in the art prior art solutions to these problems, and the sophistication of the technology. E.g., Ex. 1006, 1:13–55; Ex. 1009, 1:10– 36; see, e.g., Ex. 1007, 1:8–32, 2:12–64; Ex. 1008, 1:11–54; Ex. 1010, 145– 160; see also Ex. 1010, Preface (“The aim of this book is to combine in a single volume the fundamental principles of weft and warp knitting in such a manner that its contents are useful to readers in education, industry or commerce. It thus [fulfills] the long felt need for a comprehensive up-to-date textbook explaining this important sector of textile technology.”). Patent Owner contends that the level of ordinary skill in the art is “low” (PO Resp. 13), but it is not clear whether Patent Owner further contends that Petitioner’s assessment is deficient because Petitioner fails to argue that a person possessing such a “low” level of ordinary skill in the art also would have “experience using knitting technologies to create knitted footwear uppers” (id. at 13–14) or whether the inclusion of such skill would raise the “low” level of skill in the art (id. at 14). Alternatively, Patent Owner may merely be contending that Petitioner’s declarant fails to qualify as a person of ordinary skill in the art. Id. at 14 (“If it was too ‘dangerous’ for Mr. Holden with his nearly forty years of experience, a person with just a “few years of experience” would not have had any knitting experience, let alone experience using knitting technologies to create uppers.”); see Tr. 62:17–22. Patent Owner is not required to help us assess the level of ordinary skill in the art and does not do so here. See PO Resp. 18 (“Petitioner may criticize NIKE for not submitting an expert declaration. But it is Petitioner’s burden to prove unpatentability; it is not NIKE’s burden to prove patentability.”). In response to Patent Owner’s contentions, Petitioner argues that the level of ordinary skill in the art is not low and that hands-on knitting experience is not required. Reply 2–3. Petitioner further argues Patent Owner has not required knitting experience in its previous assessment with respect to a related patent of the level of ordinary skill in the art. Id. (citing IPR2013-00067, Ex. 2010 ¶ 52). Based on the record before us and to the extent necessary, we again adopt Petitioner’s assessment of a person of ordinary skill in the relevant art. Inst. Dec. 8 n.3.” slip op. at 10

  • Expert testimonyPetitioner expert creditedMixed

    “document.” Reply 3 (quoting Ex. 2004, 12:7–11); see Ex. 2004, 12:12– 13:16. Declarants often have assistance in authoring their declarations. See Square, Inc. v. Think Computer Corp., Case CBM2014-00159, slip op. at 26–27 (PTAB Nov. 27, 2015) (Paper 47) (“the mechanics of declaration preparation is ‘a waste of time, both for the witness and the Board’”). Mr. Holden was not required to be the sole author of his declaration. Rather, the relevant issue regarding the preparation of Mr. Holden’s declaration is whether Mr. Holden adopted the content of his declaration as his own. Here, he has. See Ex. 1003 ¶¶ 3, 4, 209. As Patent Owner suggests, we weigh Mr. Holden’s declaration testimony in light of his testimony on cross-examination. Although Mr. Holden indicated that he was unable to define or was unfamiliar with certain terms during cross-examination, he did name references, including Spencer (Ex. 1010), that he could and would consult to obtain the answers to specific questions. Tr. 63:20–64:13. Moreover, Patent Owner’s counsel acknowledged that persons of ordinary skill in the art (or declarants) do not have to have all of the knowledge relevant to their testimony in their heads and that they are allowed to consult references, as appropriate. Id. at 63:20– 64:2. Although Patent Owner notes that Mr. Holden apparently was not aware of Spencer until this inter partes review (see Ex. 2004, 77:1–3; Tr. 64:1–6), his learning of and relying on a new reference alone is not sufficient reason to disregard, i.e., give no weight to, Mr. Holden’s testimony. Further, the issue here is not whether Mr. Holden is a person of ordinary skill in the art, but rather whether his testimony is of value to the panel. See Tr. 64:15– 18. Thus, as indicated in the discussion below, we determine the appropriate weight to give to Mr. Holden’s testimony.” slip op. at 31

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “8 Patent Owner contends that Reed is not analogous art. PO Resp. 29–31. In particular, Patent Owner contends that Reed is not from the same field of endeavor as the challenged claims and that Reed’s teachings are not reasonably pertinent to the particular problem with which the recited methods are involved. Id. at 29–30. Because Reed is directed to the manufacture of all types of garments, including footwear (Reply 12–14; see Ex. 1006, 1:33–44), and Reed is related directly to preparation of garments layouts from a knitted textile structure (Reply 14–15; see Ex. 1006, 2:29– 35), we are persuaded that Reed is analogous art to the challenged claims.” slip op. at 17

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

    “i. Failure of Proof Petitioner bears the burden of proving by a preponderance of the evidence that the challenged claims are unpatentable. This includes demonstrating by a preponderance of the evidence that a person of ordinary skill in the art would have had reason to combine the teachings of Reed and Nishida to achieve the methods recited in the challenged claims. As noted above, Petitioner argues that a person of ordinary skill in the art would have had at least three reasons to combine the teachings of Reed and Nishida to achieve the methods recited in the challenged claims. Pet. 12–14; see Tr. 10:12–11:12. First, Petitioner argues that, because Reed teaches that its methods are applicable to “all types of garments” (Ex. 1006, 5:56–57 (emphasis added); see Ex. 1003 ¶ 131), a person of ordinary skill in the art would have had reason to apply the teachings of Reed to the processes and shoe parts of Nishida. Pet. 13 (citing Ex. 1003 ¶ 133). Second, Petitioner argues that, because both Reed and Nishida teach the advantages of reducing cost through the use of computer-controlled knitting machines, a person of ordinary skill in the art would have had reason to combine their teachings. Pet. 13 (citing Ex. 1003 ¶¶ 134–135). Third, Petitioner argues that a person of ordinary skill in the art would have had reason to apply Reed’s methods for producing textile elements, from which to produce garments, to produce Nishida’s shoe upper patterns. Id. at 13–14; see KSR, 550 U.S. at 417. However, none of these reasons or any other reason identified by Petitioner addresses the differences between Reed and Nishida, specifically pre-seaming.” slip op. at 34

  Patent outcomesUS 7,814,598 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,814,598
• RPX Corporation v. Chanbond LLCNo claims unpatentable
  PTAB · May 25, 2017 · IPR2016-00234 · APJ Jacqueline T Harlow · IPR · Final written decision

  RPX did not prove claims 1–31 unpatentable under § 103: the record lacked an adequate reason to combine the cited references.

  RulingsFinal written decision

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

    “The broadest reasonable interpretation of the claim terms “digital stream” and “digital information stream” includes no requirement, however, that the packets of the recited stream must be differentiated from other packets by more than destination address. As explained above, independent claims 1 and 19 of the ’822 patent describe the “digital stream” as the product of the combiner combining demodulated channels identified as having information addressed to an addressable device. Ex. 1001, 12:29–40, 15:11–23. Claims 1 and 19 additionally state that the digital stream is output to the addressable device. Id. Neither claim 1 nor claim 19 recites further detail concerning the characteristics of the packets of the “digital stream.” Id. Moreover, the dependent claims of the ’822 patent suggest that a “stream” may include unrelated content from different sources that is 9 addressed to different destinations. For example, claims 14 and 28, which depend indirectly from claims 1 and 19, respectively, recite that the “combiner is configured to combine the digital information demodulated by the wireless demodulator unit with digital information received from at least one addressable device, and output the combined digital information as the outgoing digital information stream to the wideband distribution unit.” Ex. 1001, 14:14–19, 16:49–54. Thus, by their plain language, these claims contemplate that the digital information to be combined may be received from more than one addressable device, and remain agnostic regarding the relationship between the packets in a stream, or the ultimate destination of those packets. See Ex. 1020, 96:11–97:8 (testimony by Dr. Nettles that claims 13 and 14 of the ’822 patent refer to a “digital information stream” that may include packets from different devices, relating to different content, going to different destinations). The specification of the ’822 patent is likewise consistent with an understanding of the claim terms “digital stream” and “digital information stream” as being free from any requirement that the packets of the recited stream be differentiated from other packets by more than destination address. Aside from the claims themselves, the specification of the ’822 patent uses the term “digital stream” in only a single instance, to describe signal throughput (the specification nowhere uses the term “digital information stream”). Ex. 1001, 10:10–14. The specification explains that “the channel width can, for example, be increased from 6 MHz per channel to 12 MHz per channel in order to accommodate, for example, the” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededOther

    “2. Other Claim Terms In the Decision on Institution, we concluded that the claim terms “when,” “detector,” “additive signal,” and “channel identification information,” for which RPX proffered constructions in its Petition (Pet. 7– 9), did not require express construction, and should be given their plain and ordinary meaning. Dec. 6. Neither RPX nor ChanBond challenges our determination that the plain and ordinary meaning of each of these terms applies in the instant proceedings. Pet. Reply 1 (“RPX agrees with the Board that affording those terms their ordinary and customary meaning is appropriate for the purposes of these proceedings.”); PO Resp. 21 (“[T]he term ‘when’ requires only its ‘ordinary and customary meaning.’ . . . [T]he term ‘detector’ is used in accordance with its regular and customary meaning[.]”), 25 (“Insofar as this construction is consistent with the ‘ordinary and customary meaning’ of this term, Patent Owner agrees, however, it should not be limited unnecessarily by the cited examples from the specification referenced by Petitioner.”), 26 (“[T]he claim is plain in meaning as written, no further construction is necessary.”). Accordingly, we conclude that none of the claim terms “when,” “detector,” “additive signal,” and “channel identification information,” requires express construction, and afford each term its plain and ordinary meaning.” slip op. at 12

  • BurdenNot shown unpatentable

    “We find that the preponderance of the evidence does not support a conclusion that an artisan of ordinary skill would have had reason to combine the network gateway of Rakib with the protocols and formatting disclosed in DOCSIS 1.1.4. We are mindful that obviousness inquiry requires “an expansive and flexible approach.” KSR, 550 U.S. at 415. Such analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. It is axiomatic, however, that a determination of obviousness “cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Kahn, 441 F.3d at 988.” slip op. at 18

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

    “RPX does not offer adequate explanation as to why a relevant skilled artisan would have sought to combine Rakib with DOCSIS 1.1.4, when Rakib is addressed to DOCSIS 1.2, and makes no mention of DOCSIS 1.1.4. Nor does RPX explain why an ordinarily skilled artisan would have understood Rakib’s references to “DOCSIS 1.2 compatible,” “DOCSIS modem,” or “DOCSIS data” as suggesting combination with DOCSIS 1.1.4. In this regard, we highlight that RPX does not present evidence sufficient to establish any relationship between the cited portions of DOCSIS 1.1.4 and DOCSIS 1.2, or otherwise demonstrate a rationale for combining Rakib with 20 DOCSIS 1.1.4. Rather, RPX relies solely on Mr. Koperda’s unsupported, conclusory testimony (in a footnote) that any differences between DOCSIS 1.1.4 and DOCSIS 1.2 are “not relevant to the downstream/upstream RF channel management” (Ex. 1002 ¶ 104 n.3); testimony to which we give little weight (37 C.F.R. § 42.65(a)).” slip op. at 20

  Patent outcomesUS 7,941,822 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,941,822
• Praxair Distribution, Inc. v. Ino Therapeutics, LLCNo claims unpatentable
  PTAB · Sep 15, 2016 · IPR2015-00891 · APJ Scott A Daniels · IPR · Final written decision

  Praxair failed to prove claims 1–16 unpatentable under the three §103 grounds because it did not establish a sufficient reason to combine the prior art.

  RulingsFinal written decision

  • BurdenFwd all claims patentableNot shown unpatentable

    “sensed in-line gas concentration being used to perform verification of gas supply and gas delivery to a subject or patient into a device receiving gas concentration information from Peters’s handle and memory on the gas supply cylinder in order to verify and control gas delivery to a patient smacks of hindsight reasoning. After considering the evidence and arguments of both parties, we conclude that Praxair has failed to carry its burden of demonstrating, by a preponderance of the evidence, that independent claim 1 is unpatentable. Because Praxair’s obviousness analysis for dependent apparatus claims 2–11, as well as the dependent method claims 12–16, asserted in each of the grounds in this proceeding relies on the deficient asserted combination including Bathe and Peters, we similarly are not persuaded that Praxair has sustained its burden of demonstrating, by a preponderance of the evidence that claims 2–16 are unpatentable.” slip op. at 27

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

    “argument and testimony that Peters’s valve could work on Bathe’s cylinder does not explain why or how a person of skill in the art would combine Bathe and Peters, only that they could. PO Resp. 43–44. That Bathe could be modified by simply placing Peters’s valve on the cylinder to control gas flow from the cylinder, does not, alone, satisfy the requirements for combining the prior art. See InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014) (Experts “testimony primarily consisted of conclusory references to her belief that one of ordinary skill in the art could combine these references, not that they would have been motivated to do so.”). Petitioner’s challenge lacks an adequate motivation, not only to incorporate the smart valve of Peters into Bathe, but also to: (1) repurpose the incorporated valve by using (a) its “memory to store gas data comprising one or more of gas identification, gas expiration date and gas concentration” and (b) its processor and transmitter “to send and receive wireless optical line-of-sight signals to communicate the gas data to the control module that controls gas delivery to a subject” and (2) modify the Bathe system, such that its CPU would receive the wirelessly transmitted gas concentration data, even though the CPU already receives (and uses) flow and operator input data to provide a desired NO concentration. See Ex. 1005, 6:5–20.” slip op. at 21

  • Expert testimonyPetitioner expert discountedOther

    “read [Bathe] and been motivated to apply subsequent improvements to component parts of that system, such as the improved valve of [Peters].” Ex. 1002 at ¶ 112 (citing Ex. 1005, 6:11–15). Dr. Stone does not, however, point to any persuasive evidence or disclosure in Bathe, or provide sufficient explanation or reasoning to support this statement. See id. In particular, Dr. Stone does not describe what the “improvements” would have been or provide sufficient rationale as to why Bathe, which already has a connection between a supply cylinder and a gas delivery device and teaches verification of gas concentration from the cylinder by sensor 65 in the delivery system, would be improved by Peters’s manually actuated valve handle and included memory to meet the limitations of the independent claims. See Ex. 1005, 6:11–15. We find Dr. Stone’s testimony deficient as to showing any suggestion in Bathe or otherwise that would have motivated one of skill in the art to add Peters’s valve and memory to Bathe. We are also not persuaded that a person of skill in the art would have” slip op. at 23

  • ExcludeMotion to exclude, deniedDenied

    “D. INO’s Motion to Exclude Patent Owner seeks to exclude the testimony of Dr. Robert Stone (Exs. 1002, 2020). Because we do not rely on Dr. Stone’s testimony in a manner adverse to INO, the motion to exclude is dismissed as moot.” slip op. at 28

  Patent outcomesUS 8,573,210 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,573,210
• Praxair Distribution, Inc. v. Ino Therapeutics, LLCNo claims unpatentable
  PTAB · Sep 15, 2016 · IPR2015-00889 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1–7 were not shown unpatentable as obvious over the asserted combinations because Praxair did not establish a sufficient reason to combine the references.

  RulingsFinal written decision

  • ExcludeOther

    “D. INO’s Motion to Exclude Patent Owner seeks to exclude the testimony of Dr. Robert Stone (Exs. 1002, 2020). Because we do not rely on Dr. Stone’s testimony in a manner adverse to INO, the motion to exclude is dismissed as moot.” slip op. at 25

  • Skill levelOther

    “B. The Level of Ordinary Skill in the Art Praxair asserts that a person of ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, computer science, computer engineering, or the equivalent, and would have had at least two years’ experience in biomedical engineering designing medical gas delivery or monitoring systems.” Pet. 9–10 (citing Ex. 1002 ¶¶ 17–18). INO does not expressly dispute the general level of skill in the art proffered by Praxair but adds through its declarant, Mr. Warren P. Heim, that one of skill in the art would “know Food and Drug Administration (FDA) Current Good Manufacturing Practices.” Ex. 2021 ¶ 107.” slip op. at 15

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

    “presented by both parties and the prior art itself, we find that Praxair has not shown a sufficient reason for a person of ordinary skill in the art to have made the proposed combination of Bathe, Peters, FR ’804, and the IR Standard. PO Resp. 36–53. INO points out, correctly, that Praxair has not shown that a person of ordinary skill in the art would have been motivated to combine Peters’s smart valve, having a memory for compiling data for billing and invoicing functions, with Bathe. Id. Moreover, we are not persuaded that Praxair’s inability to provide sufficient motivation for combining Peters and Bathe is remedied by the introduction of FR ’804, particularly given that Bathe already included an in-line sensing unit to sense and verify the gas concentration from the cylinder as required by FDA guidance. Id. at 47.” slip op. at 18

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

    “time of litigation. KSR, 550 U.S. at 421 (“[a] factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning”). “Good ideas may well appear ‘obvious’ after they have been disclosed.” Arkie Lures, Inc. v. Gene Larew Tackle, Inc., 119 F.3d 953, 956 (Fed. Cir. 1997). In the instant case, Praxair’s attempt to transform Bathe from having a sensed in-line gas concentration being used to perform verification of gas supply and gas delivery to a subject or patient into a device receiving gas concentration data from Peters’s handle and memory on the gas supply cylinder in order to verify and control gas delivery to a patient smacks of hindsight reasoning. After considering the evidence and arguments of both parties, we conclude that Praxair has failed to carry its burden of” slip op. at 24

  Patent outcomesUS 8,573,209 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,573,209
• EMC Corporation v. Acqis LLCNo claims unpatentable
  PTAB · Mar 8, 2016 · IPR2014-01462 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 54 and 56–61 were not shown unpatentable because the evidence did not establish that the cited references rendered the claimed PCI transaction communication obvious.

  RulingsFinal written decision

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

    “construction in the Decision on Institution. The evidence indicates that the term “Peripheral Component Interconnect (PCI) bus transaction” refers to a particular industry standard, not just any communication with an interconnected peripheral component. Industry literature and dictionaries use the proper noun “Peripheral Component Interconnect” and the abbreviation “PCI” to refer to a particular industry specification for a local bus. See, e.g., Ex. 2001, 1; Ex. 2002, 6–7; Ex. 2003, 7–8. The challenged claims recite “Peripheral Component Interconnect” as a proper noun and abbreviate it as “PCI,” indicating that the challenged claims use those terms consistent with the understood industry meaning. Ex. 1001, col. 43, ll. 48–49, col. 44, l. 6; see Azure Networks, LLC v. CSR PLC, 771 F.3d 1336, 1348 (Fed. Cir. 2014). The written description similarly uses the abbreviation “PCI” to refer to a particular industry standard, and uses the common noun “peripheral bus” to refer to a generic peripheral bus. Compare Ex. 1001, col. 5, ll. 31–33 (“The present invention . . . interface[s] two PCI or PCI-like buses”), with id. at col. 10, ll. 53–55 (“Additionally, the peripheral controller is coupled to a clock control logic, a configuration signal, and a peripheral bus.”) (emphasis added).” slip op. at 6

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “obvious over Horst and LVDS Owner’s Manual; claims 56 and 59 would have been obvious over Horst, LVDS Owner’s Manual, and Pocrass; and claim 58 would have been obvious over Horst, LVDS Owner’s Manual, and Deters. Pet. 58–59. A claim is unpatentable as obvious under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) any objective indicia of non-obviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We have considered the parties’ arguments and supporting evidence, and we determine that Petitioner has not shown by a preponderance of the evidence that claims 54 and 56–61 would have been obvious over the cited references.” slip op. at 7

  • ExcludeMotion to exclude, deniedMixed

    “Owner argues that paragraphs 10–24 and 31–37 of Exhibit 1031 should be excluded as irrelevant and prejudicial because Petitioner relies on those paragraphs to support improper arguments in the Reply. PO Mot. 8. Petitioner argues in the Reply that the TNet transaction in Horst includes PCI address bits, and that claim 54 only requires communicating two bits of a PCI bus transaction. PO Mot. 1. Patent Owner contends that both arguments exceed the scope of a proper reply, as set forth in 37 C.F.R. § 42.23(b), and that the portions of Exhibit 1031 that Petitioner relies upon to support those arguments should be excluded as irrelevant and prejudicial. PO Mot. 2–4, 6, 7. Patent Owner’s argument is not persuasive. Patent Owner argues in the Response that the TNet transaction in Horst does not include PCI address bits. PO Resp. 27–29. As such, Petitioner’s argument in the Reply that the TNet transaction includes PCI address bits is responsive to an argument raised in the Response. See 37 C.F.R. § 42.23(b) (generally permitting a reply to respond to arguments raised in a response). Patent Owner also argues in the Response that claim 54 requires communicating a 32-bit PCI address. PO Resp. 8–11. As such, Petitioner’s argument in the Reply that claim 54 only requires communicating two bits of a PCI bus transaction is responsive to an argument raised in the Response. Because we are not persuaded that the identified arguments in the Reply are improper, the premise of Patent Owner’s Motion to Exclude Exhibit 1031 fails. Therefore, Patent Owner’s Motion to Exclude paragraphs 10–24 and 31–37 of Exhibit 1031 is denied.” slip op. at 16

  Patent outcomesUS 8,041,873 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 8,041,873

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.