- Allstate Insurance Company v. Atos, LLCSome claims unpatentablePTAB · Jan 30, 2026 · IPR2021-01449 · APJ Jon M Jurgovan · IPR · Remand
Claims 3–5 are unpatentable; claims 1 and 2 are not shown unpatentable. Claims 3 and 4 are obvious over the applied grounds under the remand construction of “movement vector.”
RulingsRemand decision- RemandOther
“was incorrect, vacated the Final Written Decision as to claims 3 and 4, and remanded the case to the Board to determine the ordinary and customary meaning of “movement vector” and decide the outcome for claims 3 and 4 in accordance with that meaning. Atos, LLC v. Allstate Insurance Company, 2025 WL 1482404, at *5 (Fed. Cir. May 23, 2025); Paper 35 (“Federal Circuit Remand,” “Remand,” or “Fed. Cir. Remand”). Pursuant to the Federal Circuit’s instructions, the Board authorized the” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“considered individually and together, have well-understood, common meanings to ordinarily skilled artisans as of the invention date, reflected by the ’174 patent’s specification and other evidence of record noted above. Accordingly, we determine that the ordinary and customary meaning of “movement vector” is “a vector indicating movement of an object.” 3) “operation indicator” Petitioner” slip op. at 20
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Dr. Kanellakopoulos’s explanation that angular momentum is not inherent to an object, and its computation requires an arbitrary choice of a point of origin that has no physical meaning in the context of vehicle motion, also supports Patent Owner’s position. Id. ¶ 71 (citing Ex. 2004, 262). Accordingly, Patent Owner’s argument, that angular momentum cannot be used to detect a vehicle turning, is persuasive. Id. We also find persuasive, as Dr. Kanellakopoulos explains, that Petitioner’s argument regarding the figure on Kleppner 234 is based on misinterpretation of the vectors in that figure. Id. ¶ 67 (explaining that Kleppner 233–234 does not depict a gravity vector).” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Kleppner does not disclose a rotation vector, a person of ordinary skill would have used the knowledge of a rotation vector (because it is a term of art) alongside Kleppner’s teaching, to arrive at claim 1. See Pet. Reply 11. This argument does not satisfy Petitioner’s burden to provide articulated reasoning with some rational underpinning to support the conclusion of obviousness. See KSR, 550 U.S. at 419 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Petitioner does not explain which teaching of Kleppner a person of ordinary skill would have selected and combined with their knowledge of a rotation vector to yield the method of claim 1, or explain why a person of ordinary skill would have recognized based on Kleppner that estimating the angle between a rotation vector and gravity vector could be used to detect a vehicle turning. Nor does Petitioner respond to Patent Owner’s assertion that Kleppner provides no rationale for estimating an angle of alignment between a rotation vector and gravity vector as a way of detecting a vehicle turning. See Ex. 2001 ¶ 65.” slip op. at 35
Patent outcomesUS 9,846,174 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,846,174 - Dexcom, Inc. v. Abbott Diabetes Care Inc.Some claims unpatentablePTAB · Jul 10, 2023 · IPR2022-00605 · APJ Cynthia M Hardman · IPR · Final written decision
Claims 1–6, 8–10, and 12–17 are unpatentable over Gravesen and Brister; claims 7, 11, and 18–28 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The person of ordinary skill in the art as of the earliest possible effective filing date (“POSITA”) would have had a Bachelor’s degree in Bioengineering, Mechanical Engineering, Electrical Engineering, or a related subject, and one or more years of experience researching, developing and/or designing insertable medical devices, including, e.g., systems for implanting wearable medical devices such as cannulas, infusion sets, and analyte sensors, or equivalent experience. Less work experience may be compensated by a higher level of education, such as a Master’s Degree, and vice versa. Pet. 14–15 (citing Ex. 1003 (Fletcher Decl.) ¶ 22). Patent Owner does not dispute Petitioner’s proposal. PO Resp. 11 n.1. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the cited prior art and is undisputed on this record, we adopt it for purposes of this Decision.” slip op. at 8
- Expert testimonyPetitioner expert creditedPatent owner expert discountedOther
“Second, turning to the extrinsic evidence of record, Dr. Fletcher points to a general dictionary definition indicating that a rotor is simply a “rotating member.” Ex. 1003 (Fletcher Decl.) ¶ 81 (citing Ex. 1025 (dictionary excerpts), 1). In contrast, Dr. Cima provides no evidence corroborating his evidence. The language Patent Owner quotes from the Petition comes from a “Dictionary of Mechanical Engineering.” See Pet. 38 n.9 (quoting Ex. 1024, 328). This contradicts Patent Owner’s argument that Petitioner’s proposed construction “has no basis in mechanical engineering.” PO Resp. 19. view that a rotor must rotate on a central axis. He cites a textbook indicating that “[r]otational motion needs to take place around an appropriate axis,” but he does not explain whether or why the “appropriate axis” must necessarily be a “central axis.” Ex. 2024 (Cima Decl.) ¶ 179 (quoting Ex. 2040 (Rotordynamics) 2 (emphasis added)). “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“On the full trial record, we again find that Patent Owner’s proposed narrowing is unwarranted. First, the intrinsic record does not support Patent Owner’s required “central” axis. Patent Owner argues that the Specification describes two inserter embodiments as having “rotors,” and those rotors have a central axis. PO Resp. 17–18 (citing Ex. 1001, 29:25–28, 29:55–59, Figs. 32, 45). Patent Owner, however, fails to explain why those embodiments should be understood to limit the claims. For example, in Phillips, the Federal Circuit “expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment.” Phillips, 415 F.3d at 1323; see also SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“[A] particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.”). Second, turning to the extrinsic evidence of record, Dr. Fletcher points to a general dictionary definition indicating that a rotor is simply a “rotating member.” Ex. 1003 (Fletcher Decl.) ¶ 81 (citing Ex. 1025 (dictionary excerpts), 1). In contrast, Dr. Cima provides no evidence corroborating his evidence. The language Patent Owner quotes from the Petition comes from a “Dictionary of Mechanical Engineering.” See Pet. 38 n.9 (quoting Ex. 1024, 328). This contradicts Patent Owner’s argument that Petitioner’s proposed construction “has no basis in mechanical engineering.” PO Resp. 19. view that a rotor must rotate on a central axis. He cites a textbook indicating that “[r]otational motion needs to take place around an appropriate axis,” but he does not explain whether or why the “appropriate axis” must necessarily be a “central axis.” Ex. 2024 (Cima Decl.) ¶ 179 (quoting Ex. 2040 (Rotordynamics) 2 (emphasis added)). “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a).” slip op. at 11
- Strike new argumentNew argument disregardedDecided for patent owner
“Although the Petition does state that a person of ordinary skill in the art “would understand the plain and ordinary meaning of a ‘recess’ to include ‘an indentation in a line or surface (as an alcove in a room),’” the Petition does not specify what else is “include[d]” in this term, nor does it specify that the plain and ordinary meaning of “recess” includes the entire interior of a housing. The Petition also does not invoke the Specification as demonstrating that the plain and ordinary meaning of “recess” includes the entire housing.13 Pet. 64 (emphasis added). Petitioner’s belated proposal also conflicts with the language of the claims themselves. Independent claim 1 recites “a rotor disposed within the inserter housing.” Ex. 1001, 43:42. Dependent claim 7 narrows claim 1 by reciting that “the housing comprises a recess in which the rotor is received.” Id. at 44:11–12. If the interior of the inserter housing and the recess could be one and the same as Petitioner proposes, there would be no need for claim 7, because it would not further limit claim 1. See 35 U.S.C. § 112(d) (“a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed”); see also Nazomi Commc’ns, Inc. v. Arm Holdings, PLC, 403 F.3d 1364, 1370 (Fed. Cir. 2005) (“The concept of claim differentiation ‘normally means that limitations stated in dependent claims are not to be read into the independent claim from which they depend.’”) (quoting Karlin Tech., Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 971–72 (Fed. Cir. 1999)). Accordingly, we decline Petitioner’s belated request to construe “recess” to include “an entire cavity of a housing or a cylinder.” 13 We acknowledge that Petitioner argued that the entire interior of Gravesen’s housing maps to the claimed “recess,” but this was in the context of comparing the prior art to the claim as construed. Indeed, Petitioner asserted that “the space within [Gravesen’s] housing is an alcove.” Pet. 64– 65 (emphasis added). In sum, Petitioner did not timely argue that the plain and ordinary meaning of the term “recess” includes an entire cavity of a housing or a cylinder. We adopt the only construction Petitioner offered and supported in the Petition. In view of the above, we construe “recess” as meaning “an indentation in a line or surface (as an alcove in a room).”” slip op. at 16
Patent outcomesUS 10,945,649 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,945,649 - Pelican Biothermal, LLC v. Va-Q-Tec AGSome claims unpatentablePTAB · Jun 16, 2023 · PGR2021-00085 · APJ Barry L Grossman · PGR · Final written decision
The Board granted the motion to amend but held amended claim 64 unpatentable as anticipated by NanoCool 98596-type products and obvious over the cited combinations; all other amended claims were not shown unpatentable.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“VI. ORDER In consideration of the foregoing, it is hereby: ORDERED that Petitioner has demonstrated by a preponderance of the evidence that amended claim 64 is unpatentable; FURTHER ORDERED that Patent Owner’s Non-Contingent Motion to Amend is granted for claims 64 and denied for all other amended claims; and” slip op. at 77
- ExcludeMotion to exclude, deniedDenied
“A. Status as Prior Art Is a Substantive Issue, Not an Evidentiary Issue. A motion to exclude is not an appropriate mechanism for challenging the sufficiency of evidence, such as whether a reference qualifies as prior art, or the proper weight that should be afforded an argument. See Flir Systems, Inc. v. Leak Surveys, Inc., IPR2014-00411, Paper 113, 4, 8–9 (PTAB September 3, 2015); PTAB Consol. Trial Practice Guide 79 (Nov. 30 Mr. Zumwalt testifies that other NanoCool products, designated by product number 85430 and 98630, also have the same configuration as the 98830 product and are made by the same process. Thus, “the 98830, 85430, and 98630 products can be collectively referred to as ‘98830-type’ products all having the same relevant design.” Ex. 1030 ¶ 17. 2019) (“A motion to exclude . . . may not be used to challenge the sufficiency of the evidence to prove a particular fact. A motion to exclude is not a vehicle for addressing the weight to be given evidence—arguments regarding weight should appear only in the merits documents.”); Caterpillar Inc. v. Wirtgen Am., Inc., IPR2017-02187, Paper 42,17 (PTAB May 21, 2019) (status as prior art “is a substantive issue, not an evidentiary issue.”) Thus, whether the NanoCool 98830 product is prior art is not the proper basis for Patent Owner’s Motion to Exclude evidence concerning the NanoCool 98830 product.” slip op. at 29
- Skill levelSkill level board ownOther
“Neither Petitioner nor Mr. Harber provide any analysis of the factors pertinent to a determination of the level of ordinary skill, identified above, to support their conclusory statements. We give Mr. Harber’s conclusory testimony minimal probative weight. 37 C.F.R. § 42.64(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, there is no persuasive evidence to which we have been directed of the need for specific education or experience in biological or chemical technologies related to the claimed containers and inserts.” slip op. at 26
- Expert testimonyPetitioner expert discountedDecided for patent owner
“With regard to the level of ordinary skill in the art, Petitioner asserts that a person of ordinary skill would have had “a bachelor’s degree or higher degree in biological, chemical or mechanical engineering, or related sciences, and at least two to five years of experience in designing and testing ISCs [insulated shipping containers] depending on education level.” Pet. 9 (emphasis added) (citing Ex. 1002 ¶¶ 23–24). Exhibit 1002 is the Declaration testimony of Mr. Paul Haber. Mr. Harber actually states a slightly different level of ordinary skill. Mr. Harber testifies: The hypothetical POSITA would have: (i) at least a bachelor’s degree in biological, chemical or mechanical engineering, or related sciences, and have at least three to five years of experience in designing and testing ISCs [Insulated Shipping Containers][29]. Such a person may also have (ii) a higher level degree, such as a PhD and/or Master’s degree in engineering, or related sciences, and have at least two to three years of experience in designing and testing ISCs. 29 See Ex. 1002 ¶ 23. Ex. 1002 ¶ 24 (emphasis added). Mr. Harber also testifies that “[t]hese descriptions are approximate, and a higher level of education or specific skill might make up for less experience, and vice-versa.” Id.” slip op. at 25
Patent outcomesUS 10,766,685 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,766,685 - Edwards Lifesciences Corporation / Edwards Lifesciences LLC v. Aortic Innovations, LLCSome claims unpatentablePTAB · Apr 24, 2023 · IPR2022-00193 · APJ John G New · IPR · Final written decision
Claims 1–8, 10–18, and 20 are unpatentable as obvious over Spenser and Spenser II; claims 9 and 19 were not shown unpatentable.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Spenser II provides that its cloth “has a thickness ranging from about 1 to 5 mm.” Spenser and Levi both teach a valve that has a diameter of 25 mm and 26 mm respectively when fully expanded. Accordingly, even if we were to assume a POSITA used the thinnest possible cloth in Spenser II, Petitioner’s proposed combination using the smaller Spenser 25 mm diameter (12.5 mm radius) expanded valve covered by a 1 mm cloth resulting in a 27 mm diameter (13.5 mm radius) valve…. From this we can conservatively estimate how much cloth is required for a cross-section of the proposed device (Acloth) by calculating the total area of a cross-section of the cloth-covered valve (π*(13.5 mm)2) and subtracting the area of a cross-section of just the valve (π*(12.5 mm)2). Acloth = π*(13.5 mm)2 - π*(12.5 mm)2 = 81.68 mm2 Accordingly, Petitioner’s proposed combination requires 81.68 mm2 of outer cloth in a given cross-section of the device.” slip op. at 78
- Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersObjective indicia no nexusDecided for petitioner
“that the claims are not obvious over Spenser and Spenser II because Petitioner fails to demonstrate that any of its proposed prior art combinations disclose or render obvious a valve with a “sealing material” that is delivered “endovascularly.” PO Resp. 11. Patent Owner also argues Petitioner fails to prove that any of its combinations disclose or render obvious a “fibrous network” “in overlapping radial alignment with native valve leaflets.” Id. at 73. Additionally, Patent Owner contends that objective indicia of non-obviousness (also called secondary considerations) support a conclusion that the challenged claims are nonobvious. Id. at 2. Finally, Patent Owner contends that the testimony of Petitioner’s expert, Dr. Buller, should be given little or no weight, because, Patent Owner argues, he has no expertise in the issues at hand. Id. at 90.” slip op. at 16
- Expert testimonyPetitioner expert creditedDecided for petitioner
“that the claims are not obvious over Spenser and Spenser II because Petitioner fails to demonstrate that any of its proposed prior art combinations disclose or render obvious a valve with a “sealing material” that is delivered “endovascularly.” PO Resp. 11. Patent Owner also argues Petitioner fails to prove that any of its combinations disclose or render obvious a “fibrous network” “in overlapping radial alignment with native valve leaflets.” Id. at 73. Additionally, Patent Owner contends that objective indicia of non-obviousness (also called secondary considerations) support a conclusion that the challenged claims are nonobvious. Id. at 2. Finally, Patent Owner contends that the testimony of Petitioner’s expert, Dr. Buller, should be given little or no weight, because, Patent Owner argues, he has no expertise in the issues at hand. Id. at 90.” slip op. at 16
Patent outcomesUS 10,881,538 mixed§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,881,538 - Ford Motor Company v. Safe Driving Technologies LLCSome claims unpatentablePTAB · Mar 10, 2023 · IPR2021-01446 · APJ Alyssa A Finamore · IPR · Final written decision
Claims 1–4, 6, 10, 12–14, 16, 17, and 19–21 are unpatentable under §103; claim 15 was not shown unpatentable.
RulingsFinal written decision- ExcludeMotion to exclude, grantedGranted
“Our rules and Consolidated Trial Practice Guide are clear on this prohibition. And, the Consolidated Trial Practice Guide explains: “[w]here a party believes it has a basis to request relief on a ground not identified in the rules, the party should contact the Board and arrange for a conference call with the Board and opposing party to discuss the requested relief with the judge handling the proceeding.” CTPG 75. Thus, the Board identifies appropriate ways for a party to address matters that it considers to be beyond the specific procedures outlined in the rules. Merely submitting new evidence was not authorized by Board rules or guidance and Patent Owner did not seek authorization to file the new evidence. The facts warrant excluding Exhibits 2030–2032 and we grant the Motion. See CTPG 81.” slip op. at 83
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“underpinnings, why a person of ordinary skill would have been motivated to modify the prior art to achieve the claimed invention. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (“To satisfy its burden of proving obviousness, a petitioner . . . must . . . articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” (citing KSR, 550 U.S. at 418)). Nonetheless, “a disclosure that anticipates under § 102 also renders the claim invalid under § 103, for ‘anticipation is the epitome of obviousness.’” Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983) (quoting In re Fracalossi, 681 F.2d 792 (CCPA 1982)); see also Application of Pearson, 494 F.2d 1399, 1402 (CCPA 1974) (“[T]his court has sanctioned the practice of nominally basing rejections on § 103 when, in fact, the actual ground of rejection is that the claims are anticipated by the prior art. The justification for this sanction is that a lack of novelty in the claimed subject matter, e.g., as evidenced by a complete disclosure of the invention in the prior art, is the ‘ultimate or epitome of obviousness.’” (citations and footnote omitted)).” slip op. at 14
Patent outcomesUS 9,047,170 mixed§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,047,170 - Allstate Insurance Company v. Atos, LLCSome claims unpatentablePTAB · Jan 24, 2023 · IPR2021-01209 · APJ Richard H Marschall · IPR · Final written decision
Claims 1–4, 6, and 9–25 are unpatentable; claims 5, 7, and 8 are not shown unpatentable, based on anticipation by Kim and obviousness grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art The level of ordinary skill in the art is “a prism or lens” through which” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“C. Claim Construction In inter partes reviews, we interpret claims under the same standard” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Accordingly, Petitioner fails to establish that Kim discloses “determining that the individual is a driver of the vehicle based at least in part on acceleration, forces, velocity, the at least one location point, and time.”” slip op. at 46
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“nexus and therefore fails to establish that any alleged evidence of objective indicia supports a finding of non-obviousness. Accordingly, we give Patent Owner’s reliance on objective indicia of non-obviousness no weight in our obviousness analysis.” slip op. at 65
Patent outcomesUS 9,152,609 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,152,609 - Allstate Insurance Company v. Atos, LLCSome claims unpatentablePTAB · Jan 9, 2023 · IPR2021-01118 · APJ Richard H Marschall · IPR · Final written decision
Claims 1–5, 7, 8, 10–16, and 18 are unpatentable; claims 6, 9, and 17 were not shown unpatentable, because the asserted prior art did not establish all limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art The level of skill in the art is “a prism or lens” through which we view” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“2. Discussion Petitioner argues that Kim discloses every limitation of claim 1, and” slip op. at 23
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“2. Discussion We begin our analysis by addressing Patent Owner’s asserted objective indicia of non-obviousness, and then turn to the merits of Petitioner’s specific obviousness challenges before us.” slip op. at 52
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed
“the combination of Kim and Baker discloses “comparing the at least one current geographic location to the first geographic location; setting the location of the individual to the individual is in an outside of the vehicle location, when a distance between the at least one current and the first geographic locations exceeds a predetermined threshold.” Accordingly, we determine that Petitioner has not established by a preponderance of the evidence that claim 6 would have been obvious based on Kim and Baker.” slip op. at 90
Patent outcomesUS 8,527,140 mixed§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,527,140 - Alcon Inc. / Alcon Vision, LLC et al. v. Amo Development, LLCSome claims unpatentablePTAB · Dec 6, 2022 · IPR2021-00856 · APJ Ryan H Flax · IPR · Final written decision
Claims 1–15 are unpatentable over the asserted §103 grounds; claims 17–23 were not shown unpatentable.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed
“persuasive and credit Dr. Kang’s testimony that Freedman’s ablating laser is incompatible with laser surgery on the lens or lens capsule during cataract surgery. Ex. 2087 ¶¶ 49–51, 79–82. This is because the ablating laser cannot pass through the cornea to reach the lens without destroying the cornea in the process. Id. ¶¶ 79, 82. In contrast, lasers used to cut internal tissues of the eye use laser photodisruption. Id. ¶ 80. Accordingly, we find that one of ordinary skill in the art would not have used Freedman’s system to perform surgery on the lens or lens capsule, as asserted by Petitioner.” slip op. at 76
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“exhibit provides no context or rationale for the award and, as discussed above, the Catalys product is composed of many components and systems not specifically covered by the challenged claims. Ex. 2043, 3. Patent Owner points also to a report dated June 28, 2012, as evidencing that this award was for the specific features of the Catalys product claimed, but this evidence lacks any identification of the author and the portion identifying features of the product appears to merely be listing features thereof rather identifying than any reason for the award. Ex. 2040. Additionally, the evidence of praise cited by Patent Owner is not specific to the subject matter of claim 1 (and its dependent claims) of the ’724 patent, but general praise for the FLACS system and laser-guided femtosecond laser procedures. See Ex. 2035; Ex. 2037; Ex. 2044; Ex. 2051. For these reasons, we are not persuaded by Patent Owner’s arguments or evidence on industry praise.” slip op. at 51
Patent outcomesUS 8,500,724 mixed§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,500,724 - Carrier Fire & Security Americas Corporation v. Sentrilock, LLCSome claims unpatentablePTAB · Sep 14, 2022 · IPR2021-00664 · APJ Ryan H Flax · IPR · Final written decision
Claims 23, 24, 28, 29, 35, 37, and 39–47 are unpatentable as obvious over Mosgrove, Harold, and Imran; the remaining challenged claims were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“ORDINARY SKILL IN THE ART Petitioner proposes that a person of ordinary skill in the art would have been “a person with at least a Bachelor’s degree in Electronics, Electrical, or Mechanical Engineering or related discipline, [and/]or at least three years of experience working with access control devices.” Pet. 8 (citing Ex. 1002 ¶ 19).10 Such a person of ordinary skill in the art could have both this level of education and experience without straying from Petitioner’s definition. Patent Owner neither contests Petitioner’s proposed definition of the ordinarily skilled artisan nor proposes an alternative. See generally Resp. Patent Owner’s witness, however, expressly adopts Petitioner’s definition. Ex. 2015 ¶ 20. We likewise adopt Petitioner’s proposed definition of the level of ordinary skill in the art and apply it here.11 hindsight, and is biased in favor of Petitioner because of employment history, and, hence, we should give his testimony “no weight.” See Resp. 9– 19. We do not agree with Patent Owner’s positions. The evidence shows that Mr. Comerford is qualified to testify on the issues in this proceeding, and we find his opinions are based on his understanding of the perspective of the ordinarily skilled artisan, his experience, the ordinary meaning of claim terms, and the disclosures of the prior art, are supported by evidence, and do not rely on the ’541 patent as a roadmap so as to infect his opinions with improper hindsight. See generally Ex. 1002; Ex. 1028; Ex. 1029. 10 We understand Petitioner’s proposed definition of the ordinarily skilled artisan to be inclusive regarding education and experience because such is reflected in Mr. Comerford’s cited testimony. See Ex. 1002 ¶ 19 (“I am such a person.”). 11 The parties use the acronym POSA to refer to the person of ordinary skill in the art. See generally Pet.; Resp.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner states that “[f]or purposes of this IPR, Petitioner does not believe any claim term requires a construction in order to resolve if the Challenged Claims are unpatentable based on the prior art presented.” Pet. 21. Patent Owner indicates it agrees with Petitioner “that the terms of the Challenged Claims should be understood as written.” See Resp. 6–7. We agree with the parties and determine that no claim term requires express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only claim terms that are in controversy need to be construed and “only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review). C.” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“In order to gain the benefit of the filing date of an earlier application under 35 U.S.C. § 120, each application in the chain leading back to the earlier application must comply with the written description requirement of 35 U.S.C. § 112.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571 (Fed. Cir. 1997); see also 35 U.S.C. § 119(e)(1) (benefit of provisional application’s filing date requires disclosure of claimed invention “in the manner provided by the first paragraph of section 112”); Dynamic Drinkware, 800 F.3d at 1381–82 (“A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.”). “Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed. It extends only to that which is disclosed.” Lockwood, 107 F.3d at 1571–72. We agree with Petitioner that the ’773 provisional does not describe the key identification tag/device required by all claims so as to satisfy § 112. Such a component is described by the ’400 patent as the RFID tag. See Ex. 1006, Fig. 5 (element 74). The ’773 provisional, on the other hand, describes nothing that could be considered the claimed key identification tag or device “for attachment to the at least one key” as recited by claim 23 or “attaching a key identification device to a key” as recited by claim 45. Ex. 1002, 23:1–5, 24:32–35. Nothing in the ’773 provisional hints that anything, be it a tag or generic device, is attached to its otherwise disclosed key; therefore, we cannot agree with Patent Owner’s arguments. See generally Ex. 1005. The ’773 provisional merely indicates that a key can be contained in, removed from, and replaced in a key container module that can somehow sense the key’s presence, but provides no description as to how this sensing is accomplished, and certainly does not describe that anything attached to the key allows this sensing. Id. ¶ 4. slip op. at 16
- Strike new argumentNew argument disregardedDecided for patent owner
“In our Trial Practice Guide we explain that a “[p]etitioner may not submit new evidence or argument in [a] reply that it could have presented earlier, e.g.[,] to make out a prima facie case of unpatentability.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 73 (Nov. 2019)14 (“CTPG” or “Trial Practice Guide”) (citing Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1077–78 (Fed. Cir. 2015)). The Trial Practice Guide further explains that “‘[r]espond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing,” and “[w]hile replies and sur-replies can help crystalize issues for decision, a reply or sur-reply that raises a new issue or belatedly presents evidence may not be considered.” Id. at 74. “In most cases, the Board is capable of identifying new issues or belatedly presented evidence when weighing the evidence at the close of trial, and disregarding any new issues or belatedly presented evidence that exceeds the proper scope of reply or sur-reply.” CTPG 80 (Nov. 2019). The Board has regularly shown this capability. See Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (The Board refusing to consider reply brief arguments advocating a “new theory” of unpatentability under 37 C.F.R. § 42.23(b)); Apple Inc. v. e-Watch, Inc., IPR2015-00412, Paper 50, 44 (PTAB May 6, 2016) (“Accepting . . . 14 Available at www.uspto.gov/TrialPracticeGuideConsolidated. belatedly presented new arguments would be unjust to the Patent Owner and we decline to do so.”). Thus, we find any suggestion by Petitioner that Mosgrove’s entire key container or key compartment is the conductive container of Diaferia is a new and late argument, which we will not consider. Likewise, we find any suggestion by Petitioner that some sort of wire or cable (or something of that nature) might be used to connect a key put inside a conductive container to a key tag that is outside that conductive container so that the tag might be inserted into a key-sensing circuit is also a new and late argument, which we will not consider.” slip op. at 30
Patent outcomesUS 7,949,541 mixedClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 7,949,541 - Runway Safe Group AB v. Earthstone International LLC And W. Gene RamseySome claims unpatentablePTAB · Feb 17, 2021 · IPR2019-01490 · APJ Ryan H Flax · IPR · Final written decision
Claims 1–11 and 13–16 are unpatentable as obvious; claim 12 was not shown unpatentable because the asserted grounds did not establish its interconnected open porosity limitation.
RulingsFinal written decision- BurdenFwd mixedMixed
“proving unpatentability of the challenged claims, and the burden of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner must prove unpatentability by a preponderance of the evidence. See 35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d) (2019). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. After considering the parties’ arguments and supporting evidence, we conclude that Petitioner has proven by a preponderance of the evidence that claims 1–11 and 13–16 of the ’671 patent are unpatentable. 35 U.S.C. § 316(e). Petitioner has not met that burden with respect to claim 12.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“any of Narmo, Hojaji, and Ramsey. Resp. 8, 16–17. On this record, we conclude it would have been obvious to the person of ordinary skill in the art to combine the teachings of ACRP and Narmo, Hojaji, or Ramsey, as asserted by Petitioner. Moreover, we also conclude such combinations merely use specific foamed glass compositions in structures already using foamed glass compositions and that the skilled artisan would have reasonably expected to successfully do so. See Ex. 1002 ¶¶ 78, 81, 84. The simplicity of the technology and the reasonably high level of skill in the art support such a conclusion.” slip op. at 57
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“disclosed foamed glass aggregate bodies to have an “interconnected open porosity” is based on an allegation of inherency, where the open porosity forms because of weathering. See Pet. 38–39 (citing Ex. 1002 ¶ 75). Similar to our conclusion regarding Ground 6, we also find that Petitioner has not demonstrated that the subject matter of claim 12 would have been obvious over ACRP. We are directed to no evidence of record that the interconnected open porosity limitation would necessarily be present or would be the natural result of weathering, as asserted by Petitioner. See Endo Pharm., 894 F.3d at 1381. To the extent that Petitioner’s argument is premised on a KSR “obvious to try” rationale, as with Ground 6, we find Petitioner presents no evidence that a person of ordinary skill in the art would have had any reason to pursue the claimed interconnected open porosity, no evidence of a design need for such a structure, and no evidence of market pressure to solve any problem relating to foamed glass porosity. KSR, 550 U.S. at 421. Indeed, Petitioner failed to clearly articulate any obvious to try rationale in the Petition.” slip op. at 74
- Strike new argumentNew argument consideredDenied
“III. PARTIES’ MOTIONS TO STRIKE OR EXCLUDE Petitioner filed a Motion to Strike Patent Owner’s Sur-Reply for” slip op. at 77
Patent outcomesUS 9,382,671 mixed§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,382,671
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.