- Nearmap US, Inc. v. Eagle View Technologies, Inc.All claims unpatentablePTAB · Dec 14, 2023 · IPR2022-01009 · APJ Russell E Cass · IPR · Final written decision
Claims 1, 2, 7, 8, 21, 22, 24, 25, 27, and 29 are unpatentable as obvious over Littleworth, Linder, and Middlebrook.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“For the foregoing reasons, we find that Petitioner has made a” slip op. at 57
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“support the conclusion that Linder has no applicability to Littleworth. For example, Dr. Bajaj references Linder’s example on page 11 of a series of images taken by an airplane and “photographed strip by strip, turning around the aircraft after every strip, so that the strips are taken in a meander-like sequence.” Ex. 2010 ¶¶ 65, 67 (citing Ex. 1012, 10–11). Dr. Bajaj points to Linder’s statement that “[t]he two images of each model have a longitudinal overlap of approximately 60 to 80%,” “neighbouring strips have a lateral overlap of normally about 30%,” and that “this is not only necessary for stereoscopic viewing but also for the connecting of all images of a block within an aerial triangulation.” Id. This portion of Linder, however, is only an example, and merely illustrates that there needs to be a certain amount of overlap between the images in order to correlate them. It is consistent with Littleworth, which also contemplates that the overlapping images are correlated by identifying and coordinating “suitable control points” among the images “to create the three-dimensional model.” Ex. 1005, 755–756; see Ex. 1028 ¶¶ 34–35, 37.” slip op. at 54
- Obviousness (§103) › Analogous artAnalogous artUnpatentable
“support the conclusion that Linder has no applicability to Littleworth. For example, Dr. Bajaj references Linder’s example on page 11 of a series of images taken by an airplane and “photographed strip by strip, turning around the aircraft after every strip, so that the strips are taken in a meander-like sequence.” Ex. 2010 ¶¶ 65, 67 (citing Ex. 1012, 10–11). Dr. Bajaj points to Linder’s statement that “[t]he two images of each model have a longitudinal overlap of approximately 60 to 80%,” “neighbouring strips have a lateral overlap of normally about 30%,” and that “this is not only necessary for stereoscopic viewing but also for the connecting of all images of a block within an aerial triangulation.” Id. This portion of Linder, however, is only an example, and merely illustrates that there needs to be a certain amount of overlap between the images in order to correlate them. It is consistent with Littleworth, which also contemplates that the overlapping images are correlated by identifying and coordinating “suitable control points” among the images “to create the three-dimensional model.” Ex. 1005, 755–756; see Ex. 1028 ¶¶ 34–35, 37.” slip op. at 54
Patent outcomesUS 8,670,961 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,670,961 - PTAB · Dec 12, 2023 · IPR2023-00910 · APJ Nathan A Engels · IPR · Institution
Instituted IPR on claims 1–6 over all petitioned grounds after finding a reasonable likelihood of prevailing; denied joinder as moot.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an inter partes review, the petitioner must show with particularity why each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b). 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).” slip op. at 9
- Other 314aInstitution denied discretionary otherDenied
“Patent Owner argues the Petition should be denied under 35 U.S.C. § 314(a) because (1) “Petitioner’s inability to commit to non-duplicative efforts between the District Court Litigation and this proceeding weighs in favor of discretionary den[ial]” (Prelim. Resp. 59), and (2) Petitioner failed to request a conference call prior to filing its Motion for Joinder (Prelim. Resp. 59–60). Petitioner asserts that no trial date has been set in the parallel district court litigation, which Patent Owner does not dispute. Pet. 55; Prelim. Resp. 59–60. Additionally, the Patent Trial and Appeal Board Consolidated Trial Practice Guide (CTPG) states that “[a] party who files a motion for joinder should arrange a conference call . . . within five business days of filing the motion.” CTPG 76 (Nov. 2019) (emphasis added).8 In light of the termination of the earlier proceeding, Petitioner’s failure to request a conference call is harmless error. Thus, we find Patent Owner’s arguments unpersuasive and decline to exercise our discretion to deny the Petition under § 314(a).” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“Pet.”) requesting inter partes review of claims 1–6 of U.S. Patent No. 9,445,041 B2 (Ex. 1001, “the ’041 patent”). Petitioner also filed a Motion for Joinder requesting joinder with IPR2022-01548 (Paper 2), but IPR2022- 01548 has since terminated due to settlement (IPR2022-01548, Paper 18). Therefore, we deny the Motion as moot. Patent Owner Advanced Coding Technologies, LLC filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art at the time of the invention would have had “at least a [b]achelor’s degree in computer science, electrical engineering, computer engineering, or a related field, with 2–3 years of experience in digital video processing, or a related field, or equivalent research or professional experience.” Pet. 7 (citing Ex. 1003 ¶ 26). Patent Owner states that it applies Petitioner’s proposed level of ordinary skill for the purposes of its Preliminary Response. Prelim. Resp. 29. For the purposes of this Decision, we apply Petitioner’s level of ordinary skill, with the exclusion of “at least” in defining the education 6 US 2011/0097059 A1, published Apr. 28, 2011. Ex. 1008. Petitioner refers to “Sekiguchi” as “Seikiguchi.” See, e.g., Pet. 3. level, which would render the definition open-ended and inclusive of persons of expert-level skill.” slip op. at 6
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,445,041 - Uv Engineering Solutions LLC v. Trojan Technologies Group UlcInstitution deniedPTAB · Dec 11, 2023 · IPR2023-01015 · APJ Scott B Howard · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–5 and 8–24 were unpatentable over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2022).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The primary dispute between the parties is whether the person having ordinary skill in the art works with lamps generally (Petitioner) or works with ultraviolet lamps for fluid treatment systems (Patent Owner). Although the specification of the ’654 patent focuses on ultraviolet lamps for fluid treatment systems (see Ex. 1001, 1:24–2:29), the claims of the patent are not so limited. Rather, the claims broadly claim “lamps” without reciting any field of use. See id. at 6:2–8:24. Because the claims are not limited to ultraviolet lamps or fluid treatment centers, Petitioner’s formulation of the level of skill is more consistent with the claims. Accordingly, we adopt Petitioner’s proposed description of the person having ordinary skill in the art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Because construction of the disputed claim limitation is not necessary to resolve the controversy, we need not expressly construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner argues that a person having ordinary skill in the art would have “modif[ied] the terminal pins 126, 128, 130, and 132 of Ellner to be angled relative to the longitudinal axis as shown in Titchener so as to create a reliable connection between cables as disclosed in Titchener.” Pet. 12. Petitioner further argues that “[s]uch a modification would be a simple substitution of one known element (i.e., angled connectors 5a and 5b of Titchener) for another (i.e., non-angled terminal pins 126, 128, 130, and 132 of Ellner) to obtain predictable results.” Id. at 12–13. According to Petitioner, the combination of the teachings of Ellner and Titchener result in a lamp in which “each of the first elongate electrical connector (i.e., terminal pin 126, 128 modified to be angled as shown in Titchener) and the second elongate connector (i.e., terminal pin 130, 132 modified to be angled as shown in Titchener) configured to form an oblique angle with respect to the longitudinal axis.” Id. at 13.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,167,654 - Resmed, Inc. v. New York UniversityAll claims unpatentablePTAB · Dec 7, 2023 · IPR2022-00993 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1, 6, 7, 10–14, 19, 20, 23–30, and 32 are unpatentable under § 103 based on Sullivan995, Sullivan460, and Matthews.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner
“not implicitly define the phrase “analyzing the breathing patterns,” as proposed, because Patent Owner has failed to show any sufficient evidence that the ’994 patent clearly expresses an intent to redefine the phrase or define the phrase in terms other than its plain and ordinary meaning. In other words, implied lexicography does not apply here. Accordingly, after reviewing Patent Owner’s contentions in light of all the evidence of record, we do not adopt Patent Owner’s proposed construction; instead, we apply the plain and ordinary meaning of “analyzing the breathing patterns” in our consideration of the issues before us.18” slip op. at 31
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“D. Other Claim Terms The Parties do not dispute the construction of any other claim terms, and we find that no other terms require express construction to resolve the controversy between the Parties. Accordingly, we do not construe any other claim terms expressly. See Realtime Data, 912 F.3d at 1375 (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., 200 F.3d at 803)).” slip op. at 31
- Skill levelOther
“G. Level of Ordinary Skill in the Art Petitioner, supported by Dr. Kirkness’s testimony, proposes that a” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“19, 20, 23–26, 28–30, and 32 and supported on the complete record before us, and, therefore, we adopt them as our own findings. See Pet. 66– 77. Accordingly, for the reasons explained by Petitioner, we find that the combination of Sullivan995, Sullivan460, and Matthews satisfies the elements of claims 6, 7, 10–14, 19, 20, 23–26, 28–30, and 32.” slip op. at 49
Patent outcomesUS 6,988,994 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,988,994 - Resmed, Inc. v. New York UniversityAll claims unpatentablePTAB · Dec 7, 2023 · IPR2022-00992 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1–14 are unpatentable as obvious: claims 1–5 and 7–14 over Sullivan995 and Sullivan460, and claim 6 over those references and Matthews.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“A. “troubled wakefulness” Petitioner proposes that we construe “troubled wakefulness” to mean” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“not implicitly define the phrase “analyzes the data to determine the patient’s breathing patterns,” as proposed, because Patent Owner has failed to show any sufficient evidence that the ’024 patent clearly expresses an intent to redefine the phrase or define the phrase in terms other than its plain and ordinary meaning. In other words, implied lexicography does not apply here. Accordingly, after reviewing Patent Owner’s contentions in light of all the evidence of record, we do not adopt Patent Owner’s proposed construction; instead, we apply the plain and ordinary meaning of “analyzes the data to determine the patient’s breathing patterns” in our consideration of the issues before us.” slip op. at 31
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Accordingly, for the reasons explained above, we find Petitioner has” slip op. at 53
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“because it too is based on Patent Owner’s proposed construction of “analyzes the data to determine the patient’s breathing patterns,” which we do not adopt for the reasons explained above. Patent Owner’s additional arguments in response to Ground 2 are directed to motivation to combine, reasonable expectation of success, and objective indicia of nonobviousness, which we address below. For the reasons discussed above, we find Petitioner’s arguments persuasive as to claim 6 and supported on the complete record before us. Accordingly, we find that the combination of Sullivan995, Sullivan460, and Matthews satisfies the subject matter of claim 6.” slip op. at 70
Patent outcomesUS 10,384,024 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,384,024 - Resmed, Inc. v. New York UniversityAll claims unpatentablePTAB · Dec 6, 2023 · IPR2022-00994 · APJ Alyssa A Finamore · IPR · Final written decision
Claims 1, 3, 7, 9, 11, and 13 are unpatentable as obvious over Sullivan995, Sullivan460, and Matthews; the Board did not reach the other grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner
“the specification . . . we do not read limitations from the embodiments in the specification into the claims.” Hill-Rom Servs., 755 F. 3d at 1371 (citing Liebel–Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 904 (Fed. Cir. 2004)). “We depart from the plain and ordinary meaning of claim terms based on the specification in only two instances: lexicography and disavowal.” Id. In order for a patentee to act as its own lexicographer, the “patentee must ‘clearly set forth a definition of the disputed claim term other than its plain and ordinary meaning’” and “must ‘clearly express an intent’ to redefine the terms.” Bradium Tech., 923 F.3d at 1044.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in mechanical engineering, biomedical engineering, or a similar technical field, with at least two years of relevant product design experience” and that “[a]dditional experience could substitute for less education, and additional education could likewise substitute for less experience.” Pet. 23 (citing Ex. 1003 ¶ 89). Petitioner further contends that the “Petition does not turn on this precise definition, and the challenged claim[s] would be unpatentable from the perspective of any reasonable person of ordinary skill in the art at the relevant time.” Id. (citing Ex. 1003 ¶ 90). Patent Owner does not object to Petitioner’s definition for the level of ordinary skill in the art. PO Resp. 11. Petitioner’s definition for the level of ordinary skill in the art is consistent with the problems addressed in the ’344 patent and the prior art. We, therefore, apply Petitioner’s level of ordinary skill in the art in this Decision.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“At the outset, we agree with Petitioner that “enablement ‘is not a requirement to prove invalidity under § 103.’” Pet. Reply 23 (quoting Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1357 (Fed. Cir. 2003)). Moreover, we also agree with Petitioner that a person of ordinary skill in the art would have understood a preset level is established from previously-acquired data, such as an average level, as Sullivan995 discloses. Id. at 22 (citing Ex. 1005, 17:3–27, Fig. 12; Ex. 2015, 38:2–16). Sullivan995 discloses the computing system may “calculate control values of patterns for each patient based on moving average values or such values or patterns will be pre-programmed into the computing system.” Ex. 1005, 17:14–18. According to Sullivan995, when “signals deviate from predetermined values or patterns the computer system generates a signal which is sent to the feedback speed controller on the blower motor.” Id. at 17:19–22.” slip op. at 48
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“The Board uses a two-step analysis in evaluating nexus between the claimed invention and objective evidence. Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 33 at 32–33 (PTAB Jan. 24, 2020) (precedential), aff’d sub nom. Zaxcom, Inc. v. Lectrosonics, Inc., 2022 WL 499848 (Fed. Cir. Feb. 18, 2022). We first consider whether the patent owner has demonstrated “that its products are coextensive (or nearly coextensive) with the challenged claims,” resulting in a rebuttable presumption of nexus. Id. at 32. If not, that “does not end the inquiry into secondary considerations”; “the patent owner is still afforded an opportunity to prove nexus by showing that the evidence of secondary considerations is the ‘direct result of the unique characteristics of the claimed invention.’” Id. at 33 (quoting Fox Factory, 944 F.3d at 1373–75). “Where the offered secondary consideration actually results from something other than what is both claimed and novel in the claim, there is no nexus to the merits of the claimed invention.” Id. (citing In re Kao, 639 F.3d 1057, 1068–69 (Fed. Cir. 2011)). There is no requirement that the objective evidence of non-obviousness be tied exclusively to claim elements that are not disclosed in the prior art, and the claimed combination as a whole may serve as a nexus for the objective evidence. Id. (citing WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1331 (Fed. Cir. 2016)).” slip op. at 56
Patent outcomesUS 9,168,344 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,168,344 - International Business Machines Corporation v. Digital Doors, Inc.Institution deniedPTAB · Dec 5, 2023 · IPR2023-00969 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution on claims 1, 6, 9, 10, 11, 15, 16, 21–23, and 27, finding Fintiv factors favored denial and the petition lacked compelling merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. In evaluating the Fintiv factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,” recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor.” Id. at 6.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons stated below, we exercise our discretion not to institute inter partes review.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We do not see compelling evidence from Petitioner that the extracting/parsing data limitation is taught or suggested by Bossemeyer. As discussed supra, in Section II.C, the ’987 patent discloses extraction occurring as an initial step in which a filter removes or extracts security-sensitive data from a data object prior to storage. See Ex. 1001, 19:45–49, Fig. 1A. In contrast, Bossemeyer discloses a “partitioned” memory (see Fig. 3, reproduced supra in Section II.E.1), but does not disclose extracting, i.e., filtering or separating, security sensitive information from source data to obtain extracted data and remainder data. See Easttom Decl. ¶ 29 (“Bossemeyer is entirely silent as to where the information stored in the central server comes from, the form it takes before it gets to the central database server, or how the different pieces of information end up in the different partitioned areas of memory.”). Petitioner points to no disclosure or suggestion that the “proprietary” and “limited access” information in Bossemeyer’s database has been filtered or separated from the “public” information, so as to result in “extracted data” and “remainder data,” as recited in the challenged claims.” slip op. at 22
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“repeatedly refers to Bossemeyer’s “partitioned” database server and attempts to equate “partitioning” with “extraction.” See, e.g., Pet. 24 (“Bossemeyer partitions or separates (e.g., extracts), user data into subsets of extracted data, e.g., limited access information and/or proprietary information, and remainder data, e.g., public information.”) (emphases and color highlighting omitted). We do not find this argument compelling. We agree with Patent Owner’s expert, Dr. Easttom, who testifies, “a partitioned memory does not Dr. Easttom explains, a partitioned memory “merely refers to memory with different areas reserved for different types of information.” Id. Petitioner argues that, to the extent Bossemeyer does not explicitly disclose “extracting data,” a person of ordinary skill would have understood that, when Bossemeyer’s central data base server “partitions” user information in terms of accessibility, Bossemeyer teaches “separating sensitive information from user data.” Pet. 27 (citing Ex. 1005, 2:17–20). We find the reference in Bossemeyer to “partitions” is not a compelling disclosure of extracting, e.g., filtering or removing, security sensitive data from a data object prior to storage. We agree, instead, with Dr. Easttom, that this disclosure in Bossemeyer is “merely referring to the act by the memory partitions of keeping different pieces of information separate from each other, not removing some pieces of data from a larger whole.” Easttom Decl. ¶ 32. He concludes that “[a person of ordinary skill] would have understood that the extracting/parsing process of the ’987 Patent is vastly different than the act of ‘partitioning’ either as used in Bossemeyer or as used in the art at the time.’” Id. ¶ 34.” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,349,987 - International Business Machines Corporation v. Digital Doors, Inc.Institution deniedPTAB · Dec 5, 2023 · IPR2023-00971 · APJ Thu A Dang · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), finding the Fintiv factors favored denial and the petition did not present compelling merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied
“1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. See Apple Inc. v. Fintiv, Inc., IPR2020 00019, Paper 11 at 6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. In evaluating the Fintiv factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,” recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor.” Id.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“We have jurisdiction under 35 U.S.C. § 314 (2018) and 37 C.F.R. § 42.4(a) (2023). Applying the standard set forth in 35 U.S.C. § 314(a), we may not institute an inter partes review (also “IPR”) unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons stated below, we exercise our discretion not to institute an inter partes review.” slip op. at 2
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Furthermore, we are not persuaded that Dr. Zadok’s testimony provides compelling evidence that this limitation is met by Bossemeyer. See Ex. 1003 ¶¶ 194–211. We agree with Patent Owner that much of Dr. Zadok’s testimony is based on assumptions that he does not support with facts. Prelim. Resp. 34–41. For example, he testifies, without factual support, that “[t]he system of Bossemeyer retrieves remainder data (e.g., public information such as a customer’s name), retrieve [sic] extracted data (e.g., proprietary or limited access information such as credit card numbers and account PIN/numbers), and then logically merges these pieces of information (i.e., reconstruct the original information to appear as before it was split into different security categories).” Ex. 1003 ¶ 207 (emphases and color coding omitted). Dr. Zadok provides no citation to Bossemeyer, and we see no disclosure that Bossemeyer’s system “logically merges” public information, such as a customer’s name, with proprietary or limited access information, such as credit card numbers and account PIN/numbers. Id. Dr. Zadok even admits that “Bossemeyer does not explicitly state that the ¶ 208. Nevertheless, he speculates (without support) that “a [person of ordinary skill in the art] would have understood that such logical merging would have been obvious to take place for the (secure) transaction to succeed.” Id. Similarly, we are not persuaded by Dr. Zadok’s testimony, referring to an example from Bossemeyer involving access to medical data (Ex. 1005, 5:6–15), that “Bossemeyer discloses permitting reconstruction of some of a user’s medical data (e.g., data including the user’s medical alerts 212, and insurance and prescription information 214) and permitting reconstruction of all of user’s data (e.g., data further including the user’s medical history 216) with additional authorization.” Ex. 1003 ¶ 210 (emphases and color highlighting omitted). We find that Dr. Zadok’s testimony is speculative, hindsight-biased, and unsupported by Bossemeyer, which does not disclose or suggest any such logical merging of data. See, e.g., Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013) (holding that an articulated reasoning “is especially important to guard against the dangers of hindsight bias”). See Ex 2004 ¶¶ 47–56 (challenging Dr. Zadok’s assumption of merging data in Bossemeyer).” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill would have “a bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent, and approximately two years of experience “[l]ess professional experience can be substituted by additional education and vice versa. Pet. 6 (citing Ex. 1003 ¶¶ 112–113). Patent Owner does not contest Petitioner’s proposal or offer an alternative. On this record, we are persuaded that Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. For purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,721,344 - Resmed, Inc. v. New York UniversityAll claims unpatentablePTAB · Dec 4, 2023 · IPR2022-00989 · APJ James A Tartal · IPR · Final written decision
Claims 1, 2, 5–11, 13, and 15–30 are unpatentable as obvious over Sullivan995 and Sullivan460; anticipation was not shown, and the other obviousness ground was not reached.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Petitioner contends that a person of ordinary skill in the art would have had “at least a bachelor’s degree in mechanical engineering, biomedical engineering, or a similar technical field, with at least two years of relevant product design experience” and “[a]dditional experience could substitute for less education, and additional education could likewise substitute for less experience.” Pet. 19 (citing Ex. 1003 ¶ 77). Petitioner further states that the “Petition does not turn on this precise definition, and the challenged claims would be unpatentable from the perspective of any reasonable person of ordinary skill in the art at the relevant time.” Id. (citing Ex. 1003 ¶ 78). Patent Owner does not dispute Petitioner’s definition of the person of ordinary skill in the art. PO Resp. 15–16. We find that the ’539 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references and in the ’539 patent is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“awake state” Claim 24 recites, in part, “to determine whether breathing patterns indicate an asleep state or an awake state.” Ex. 1001, 11:36–12:7; see also id. at 9:49–64 (claim 1 reciting “between an awake state and an asleep state”), 10:42–56 (claim 11 reciting “at least one of an awake state or an asleep state”). In regard to its allegations of obviousness, Petitioner’s arguments suggest an “awake state” ordinarily means when a patient is not asleep. Pet. 36–37, 42. By contrast, with regard to its allegations of anticipation, Petitioner argues that under Patent Owner’s “implied construction of ‘an awake state’ based on [Patent Owner’s] infringement allegations” in district court, “the patient is in an awake state when there is an absence of obstructions or other breathing patterns indicative of sleep.” Id. at 68–70 (citing, e.g., Ex. 1018 ¶¶ 2, 158, 159). Petitioner provides no further support for this “implied construction” purportedly taken from Patent Owner’s district court allegations. Id. Dr. Kirkness, in support of Petitioner, applied the plain meaning of all terms and phrases. See, e.g., Ex. 1003 ¶ 80. In regard to supporting Petitioner’s allegations of anticipation, Dr. Kirkness merely assumed Patent Owner’s purported district court claim construction “position to be true.” Ex. 1003 ¶ 253. In this proceeding Patent Owner does not propose an express meaning for “awake state.” See PO Resp. 29–33. More generally, Patent Owner states that the ’539 patent “teaches how to distinguish between an awake state and an asleep state.” Id. at 8. From the arguments of the Parties, we discern no dispute in this proceeding that a plain and ordinary meaning of an “awake state” is a state in which a patient is not asleep. See Ex. 1001, 3:1–5 (distinguishing between “a wake state” and “a sleep state”), 7:22–24 (describing an embodiment with a processing arrangement that “may determine whether the patient is in a sleep state or a wake state based on the breathing pattern”).8 We apply the plain and ordinary meaning of “awake state” in this proceeding and further determine that Petitioner has not shown by a preponderance of the evidence that an awake state means “an absence of obstructions or other breathing patterns indicative of sleep.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner
“Next, we turn to the Specification. “While we read claims in view of the specification . . . we do not read limitations from the embodiments in the specification into the claims.” Hill-Rom Servs., 755 F. 3d at 1371 (citation omitted). “We depart from the plain and ordinary meaning of claim terms based on the specification in only two instances: lexicography and disavowal.” Id. In order for a patentee to act as its own lexicographer, the “patentee must ‘clearly set forth a definition of the disputed claim term other than its plain and ordinary meaning’” and “must ‘clearly express an intent’ to redefine the terms.” Bradium Tech., 923 F. 3d at 1044. In this case, Patent Owner does not argue that it disavowed the full scope of the plain and ordinary meaning of claim 24, nor does Patent Owner argue that it explicitly defined “analyzing the breathing patterns” in the Specification. See, e.g., PO Resp. 29–32. We determine that there is no disavowal nor any explicit lexicographic definition of “analyzing the breathing patterns” in the Specification. Patent Owner instead relies on an “implied lexicography” theory as to why we should construe the phrase as Patent Owner proposes. PO Sur-reply 2, 6–7 (citing, inter alia, AstraZeneca AB v. Mut. Pharm. Co., Inc., 384 F.3d 1333, 1339 (Fed. Cir. 2004)). We disagree.” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We disagree with Patent Owner’s arguments—that Petitioner fails to show any motivation to combine and that Sullivan460 is not enabled— merely because Dr. Kirkness indicated in a deposition that he did not know how a preset level is calculated from a sentence in Sullivan460. As Petitioner explains, enablement “is not a requirement to prove invalidity under §103.” Amgen, 314 F.3d at 1357 (under §103, “a reference need not be enabled; it qualifies as a prior art, regardless, for whatever is disclosed therein”). Moreover, we agree with Petitioner that the Challenged Claims do not require any preset level for a flow rate, and a person of ordinary skill “would have understood that a preset level is established from previously-acquired data or data from a previous window of time, such as an average level, for example, as taught in Sullivan995.” Pet. Reply 15 (citing Ex. 2014, 38:2–16; Ex. 1005, 17:3–27, Fig. 12). Patent Owner responds that Petitioner’s assertion is unsupported, and that “Petitioner is obligated to address this challenge, and failed to do so.” PO Sur-reply 18–19 (citing In re Morsa, 713 F.3d 104, 110 (Fed. Cir. 2013)). We find Petitioner’s arguments persuasive because they are supported by the asserted references. Sullivan995 discloses that the computing system may “calculate control values of patterns for each patient based on moving average values or such values or patterns will be pre-programmed into the computing system.” Ex. 1005, 17:14–18. According to Sullivan995, when “signals deviate from predetermined values or patterns the computer system generates a signal which is sent to the feedback speed controller on the blower motor.” Id. at 17:19–22. Based on this disclosure, and given that Sullivan460 incorporates Sullivan995 by reference, we agree with Petitioner that Sullivan460’s disclosure of detecting that the flow rate has fallen below a preset level would have informed a person of ordinary skill that this level was predetermined, so that “the controller 100 activates the nCPAP apparatus 90 to supply air to the patient 30 at a pressure which ameliorates or eliminates the upper airway flow limitation.”16 Ex. 1006, 10:17–21.” slip op. at 50
Patent outcomesUS 9,427,539 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,427,539 - Resmed, Inc. v. New York UniversityAll claims unpatentablePTAB · Dec 4, 2023 · IPR2022-00988 · APJ James A Tartal · IPR · Final written decision
The Board held claims 1–30 unpatentable by a preponderance of the evidence, based on the asserted obviousness grounds.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“ORDER21 Upon consideration of the record before us, it is: ORDERED that Patent Owner’s Motion to Exclude (Paper 45) is denied; FURTHER ORDERED that Petitioner’s Motion to Exclude (Paper 46) is denied;” slip op. at 82
- Skill levelOther
“B. Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“1. “troubled wakefulness” Dependent claims 12 and 22 each recite, “wherein the awake state is a” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“not implicitly define the phrase “analyzes the data to determine the patient’s breathing patterns,” as proposed, because Patent Owner has failed to show any sufficient evidence that the ’009 patent clearly expresses an intent to redefine the phrase or define the phrase in terms other than its plain and ordinary meaning. In other words, implied lexicography does not apply here. Accordingly, after reviewing Patent Owner’s contentions in light of all the evidence of record, we do not adopt Patent Owner’s proposed construction; instead, we apply the plain and ordinary meaning of “analyzes the data to determine the patient’s breathing patterns” in our consideration of the issues before us.” slip op. at 32
Patent outcomesUS 9,108,009 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,108,009
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.