• Semiconductor Components Industries, LLC (D/B/A On Semiconductor) v. Power Integrations, Inc.Rehearing denied
  PTAB · Dec 21, 2017 · IPR2016-00995 · APJ Daniel N Fishman · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving claims 26 and 27 unpatentable as anticipated by MC33362.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “review the decision for an “abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision,” and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d). A request for rehearing is not an opportunity to present new arguments. See id. An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2

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

    “arguments. Our claim construction made clear in interpreting “multi-function circuit” that we agree with Patent Owner that the circuit is separate and distinct from the recited “control circuit” in the sense that the claim recites two distinct elements. Dec. 18. However, our interpretation further determined that although we agree “that the multi-function circuit and the control circuit are separate and distinct components in the claims, the claim language does not require that the functions performed by the two distinct circuits must be similarly separate and distinct.” Id. at 22. We further observed that, contrary to Patent Owner’s assertions, the Specification of the ’908 patent mentions certain functions of the multi-function circuit that are clearly tightly coupled to the “core regulation” function of the recited “control circuit.” Id. at 24–25 (e.g., shutting down the power supply in response to detecting over-voltage or under-voltage conditions). Thus, our Decision is consistent with our interpretation of “multi-function circuit” and expressly disagrees with Patent Owner’s arguments that the functions of the two circuits must also be separate and distinct.” slip op. at 3

  Claim construction
  Patents in suitUS 6,538,908
• LG Electronics, Inc. v. Broadcom CorporationInstitution denied
  PTAB · Dec 19, 2017 · IPR2017-01624 · APJ Norman H Beamer · IPR · Institution

  The Board denied institution because Diaz did not disclose internally reprogrammable hardware accelerators, and the other grounds did not cure that deficiency.

  RulingsInstitution decision

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

    “3. Construction of “configurable” In construing this term, we have considered the specification of the ’353 patent and its prosecution history. Microsoft Corp. v. Proxycinn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). In accord with these portions of the ’844 patent specification and file history discussed supra, we conclude that a hardware accelerator is configurable only if its functionality can be internally reprogrammed. Thus, under our construction, an accelerator selected by an API or other instrumentality would not itself be “configurable.” This will be discussed further infra.” slip op. at 8

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

    “However, as Patent Owner argues, Diaz ’353 does not explicitly or inherently disclose hardware accelerators that are configurable to perform decoding functions according to a plurality of decoding methods. In Diaz ’533 the overall decoder — as opposed to the constituent hardware accelerators — is configurable in that the processor controls which hardware accelerators are activated. Prelim. Resp. 2, 5–8. We see no meaningful distinction in this respect between Diaz ’353 and Sullivan ’021 which, as discussed above, discloses an API that is configurable to select various hardware accelerators, but which are not themselves configurable, to assist in the decoding process. See Prelim. Resp. 6. In sum, the functionality of the hardware accelerators of Diaz ’353 cannot be internally reprogrammed, but rather can only be bypassed or reused for various operations. Therefore, in accord with our claim construction set forth above, we determine that those hardware accelerators are not “configurable” as required by claim 1. Accordingly, Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as anticipated by Diaz ’353.” slip op. at 11

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

    “C. Obviousness of Claims 8 and 14 over Diaz ’353 and Purcell ’483, and of Claim 12 over Diaz ’353 and Fandrianto ’459 or Kim As discussed above, Petitioner has not demonstrated a reasonable likelihood of prevailing on the issue of whether Diaz ’353 discloses the claim 1 requirement of configurable hardware accelerators. Claims 8, 12, and 14 depend from claim 1 and so also include this requirement by virtue of their dependency. Petitioner’s obviousness grounds directed to these claims is premised on Petitioner’s arguments with respect to claim 1 that Diaz ’353 discloses configurable hardware accelerators. Pet. 51–63. Petitioner does not provide argument or evidence — aside from the above-considered anticipation arguments based on Diaz ’353 alone — that the combination of Diaz ’353 with Purcell ’483, Fandrianto ’459 or Kim teaches or suggests “a hardware accelerator . . . configurable to perform the decoding function according to a plurality of decoding methods.” Accordingly, Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of claims 8 and 14 as obvious over Diaz ’353 and Purcell ’483, or of claim 12 as obvious over Diaz ’353 and Fandrianto ’459 or Kim.” slip op. at 12

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Accordingly, Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as anticipated by Diaz ’353.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,284,844
• Avita Medical Limited v. Renovacare Sciences Corp.Institution denied
  PTAB · Dec 18, 2017 · IPR2017-01243 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution on all grounds, finding the petition relied on the same or substantially the same prior art previously considered by the Office.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “Our discretion pursuant to § 325(d) involves a balance between several competing interests. “On the one hand, there are the interests in conserving the resources of the Office and granting patent owners repose on issues and prior art that have been considered previously.” Fox Factory, Inc. v. SRAM, LLC, Case IPR2016-01876, slip op. at 7 (PTAB Apr. 3, 2017) (Paper 8). “On the other hand, are the interests of giving petitioner the opportunity to be heard and correcting any errors by the Office in allowing a patent—in the case of an inter partes review—over prior art patents and printed publications.” Id.” slip op. at 5

  Discretionary denial
  Patents in suitUS 9,610,430
• Hutchinson Technology Inc. / Hutchinson Technology Operations (Thailand) Co., Ltd. v. Nitto Denko CorporationInstitution denied
  PTAB · Dec 5, 2017 · IPR2017-01499 · APJ Melissa A Haapala · IPR · Institution

  The Board denied institution on claims 1–4 and 6 because Petitioner did not show a reasonable likelihood of proving anticipation or obviousness on the asserted grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “We find that the cited evidence does not support Petitioner’s position that the specific identified trace 53 meets the “eighth line” limitation. Petitioner’s own annotated version of Figure 2A shows the identified trace 53 bypassing the lines identified as the fifth and sixth lines and not “branching from fifth and sixth lines” as asserted by Petitioner. 1 See Pet. 24. The cited portions of Contreras also fail to describe that the identified trace 53 extends to be branched from the end of line 72 (fifth line) or the end of line 74 (sixth line). See Ex. 1005, 3:6–16, 4:26–34. We do not find credible Dr. Coughlin’s testimony that there is a mistake in Figure 2A because it is conclusory and not supported by evidence. See 37. C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014, 1022 (Fed. Cir. 2017)” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “that the specific identified trace 53 meets the “eighth line” limitation. Petitioner’s own annotated version of Figure 2A shows the identified trace 53 bypassing the lines identified as the fifth and sixth lines and not “branching from fifth and sixth lines” as asserted by Petitioner. 1 See Pet. 24. The cited portions of Contreras also fail to describe that the identified trace 53 extends to be branched from the end of line 72 (fifth line) or the end of line 74 (sixth line). See Ex. 1005, 3:6–16, 4:26–34. We do not find credible Dr. Coughlin’s testimony that there is a mistake in Figure 2A because it is conclusory and not supported by evidence. See 37. C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014, 1022 (Fed. Cir. 2017) 1 Figure 2A does show a trace that extends from the ends of lines 71, 72, 73, 74, but Petitioner maps this trace to the claimed “fourth line” and not the “eighth line.” See Pet. 21–22. (“The Board reviewed the evidence presented by the parties, and chose not to credit Skky’s expert testimony. . . we discern no reversible error in that choice.”). Furthermore, we agree with Patent Owner that even if Dr. Coughlin’s testimony is correct that the identified line should be connected with the buried conductive island (Ex. 1007 ¶ 96), Petitioner fails to explain how a line that connects to the buried conductive island meets the claim limitation “extends to be branched from the other end of said fifth line or the other end of said sixth line” (emphasis added).” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “In view of our analysis, we do not find it necessary to construe any terms for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 9

  Claim construction
  Patents in suitUS 7,923,644
• Icon Health & Fitness, Inc. v. Nautilus, Inc.Rehearing denied
  PTAB · Oct 27, 2017 · IPR2017-00495 · APJ Bart A Gerstenblith · IPR · Rehearing

  The Board denied rehearing, leaving in place its denial of institution because Petitioner did not show a reasonable likelihood of prevailing on any challenge to claims 1–16.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW Pursuant to 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d).” slip op. at 3

  None
  Patents in suitUS 8,323,155
• Icon Health & Fitness, Inc. v. Nautilus, Inc.Rehearing denied
  PTAB · Oct 27, 2017 · IPR2017-00493 · APJ Bart A Gerstenblith · IPR · Rehearing

  The Board denied rehearing, leaving in place its denial of institution because the Petition failed to identify corresponding structure and show the prior art disclosed the same or equivalent structures.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW Pursuant to 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous We did not undertake an analysis to determine whether the equivalent structure was shown in the prior art because Petitioner failed to do so in the first instance: “By not identifying a corresponding structure, material, or acts in the ’542 patent specification, Petitioner does not show where that structure, material, or acts or its equivalent is disclosed by Maresh-I.” Dec. 18 (citing 37 C.F.R. § 42.104(b)(4) (“The petition must specify where each element of the claim is found in the prior art . . . relied upon.”)). conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d).” slip op. at 3

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner

    “In particular, we first construed “right means,” “left means,” “second end portion support,” “first support,” “second support,” “first member,” and “second member” as invoking § 112, ¶ 6, because none of the terms has a sufficiently definite meaning as a name for structure. Dec. 7–15. Second, with respect to independent claims 1, 46, 75, and 86, we found that Petitioner did not identify corresponding structure, material, or acts in the specification for performing each of the recited functions. See id. at 17–18 (discussing Maresh-I), 19–21 (discussing Stearns). With respect to independent claims 91, 94, 97, and 100, we found that even if we accepted Petitioner’s identification of the alleged corresponding structure, material, or acts, Petitioner’s analysis failed to show that the prior art structures were the same or equivalent. Id. at 18 (discussing Maresh-I), 20–21 (discussing Stearns). Rather, Petitioner’s analysis focused entirely on the functional language of these claim elements without identifying and addressing the corresponding structure. Id. at 18 (discussing Maresh-I), 20–21 (discussing Stearns).1” slip op. at 2

  • BurdenNot shown unpatentable

    “We disagree. Petitioner did not do either. First, Petitioner did not identify any portion of the specification describing corresponding structure in the Petition. Second, there is no mention of tracks or swing arms in the discussion of Maresh-I and Stearns at pages 14, 15, and 40 of the Petition, let alone any argument that the structures identified in either reference are equivalent. See Pet. 14, 15, 40. Accordingly, we did not misapprehend or overlook whether Petitioner complied with these requirements for means-plus-function claim terms; Petitioner did not. Petitioner’s Alleged Analysis and Evidence Regarding the Same or Equivalent Structures” slip op. at 7

  Claim construction
  Patents in suitUS 7,341,542
• Icon Health & Fitness, Inc. v. Nautilus, Inc.Rehearing denied
  PTAB · Oct 27, 2017 · IPR2017-00494 · APJ Bart A Gerstenblith · IPR · Rehearing

  The Board denied rehearing, leaving in place its denial of institution because the Petition did not explain how the prior-art structures were the same as or equivalent to the claimed structures.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d).” slip op. at 3

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “focuses on the functional language of these claim limitations and fails to explain how the structures of Maresh-I and Stearns are the same as, or equivalent to, those identified in the ’219 patent. Dec. 15–16. For example, Petitioner’s discussion of Maresh-I equates the claimed “first means” and “second means” with Maresh-I’s “radially displaced pins of cranks 760,” but fails to make any argument explaining how these are the same or equivalent structures. See Pet. 13–14. Petitioner also points to paragraphs 37 and 90 of Mr. Ganaja’s declaration where he testifies that Maresh-I’s radially displaced pins are crank arms and that a connection between rollers 2023 and cranks 2020 is the crank arm in Stearns. Req. Reh’g 5–6 (discussing Ex. 1006 ¶ 37), 6 (discussing Ex. 1006 ¶ 90). There is no question that Mr. Ganaja’s testimony in these paragraphs addresses the issues that we found lacking in the Petition. The problem for Petitioner, however, is that the Petition itself did not include these arguments equating the structures as Mr. Ganaja did. Citing to these paragraphs of Mr. Ganaja’s declaration without providing any explanation of the significance thereof in the Petition itself is insufficient. See 37 C.F.R. § 42.6(3) (“Arguments must not be incorporated by reference from one document into another document.”). See also DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.”).” slip op. at 4

  • BurdenDecided for patent owner

    “focuses on the functional language of these claim limitations and fails to explain how the structures of Maresh-I and Stearns are the same as, or equivalent to, those identified in the ’219 patent. Dec. 15–16. For example, Petitioner’s discussion of Maresh-I equates the claimed “first means” and “second means” with Maresh-I’s “radially displaced pins of cranks 760,” but fails to make any argument explaining how these are the same or equivalent structures. See Pet. 13–14. Petitioner also points to paragraphs 37 and 90 of Mr. Ganaja’s declaration where he testifies that Maresh-I’s radially displaced pins are crank arms and that a connection between rollers 2023 and cranks 2020 is the crank arm in Stearns. Req. Reh’g 5–6 (discussing Ex. 1006 ¶ 37), 6 (discussing Ex. 1006 ¶ 90). There is no question that Mr. Ganaja’s testimony in these paragraphs addresses the issues that we found lacking in the Petition. The problem for Petitioner, however, is that the Petition itself did not include these arguments equating the structures as Mr. Ganaja did. Citing to these paragraphs of Mr. Ganaja’s declaration without providing any explanation of the significance thereof in the Petition itself is insufficient. See 37 C.F.R. § 42.6(3) (“Arguments must not be incorporated by reference from one document into another document.”). See also DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.”). Accordingly, we did not misapprehend or overlook discussion in the Petition regarding these structures.” slip op. at 4

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “In particular, we first construed “first means” and “second means” as invoking § 112, ¶ 6, as proposed by Petitioner and Patent Owner. Dec. 9. Second, we found that even if we accepted Petitioner’s identification of the alleged corresponding structure, material, or acts, Petitioner’s analysis failed to show that the prior art structures were the same or equivalent. Id. at 15– 16 (discussing Maresh-I and Stearns). Rather, Petitioner’s analysis focused entirely on the functional language of these claim elements without addressing the corresponding structure. Id.” slip op. at 2

  Claim construction
  Patents in suitUS 7,632,219
• Icon Health & Fitness, Inc. v. Nautilus, Inc.Rehearing denied
  PTAB · Oct 27, 2017 · IPR2017-00490 · APJ Bart A Gerstenblith · IPR · Rehearing

  The Board denied rehearing, finding no overlooked or misapprehended matter in its § 112, ¶ 6 construction and its determination that Petitioner’s prior-art analysis was deficient.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW Pursuant to 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d).” slip op. at 3

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner

    “In particular, we first construed “second portion support” as invoking § 112, ¶ 6, because it did not have a sufficiently definite meaning as a name for structure. Dec. 7–10. Second, we found that Petitioner did not identify corresponding structure, material, or acts in the specification for performing the recited function of guiding the second portions of the right and left foot engagement members to follow a forward-rearward reciprocating motion in response to the user moving the user’s feet with striding steps during the striding exercise as the right and left crank arms reciprocally lift and lower the first portions of the right and left foot engagement members. Id. at 11–12 (quoting Ex. 1001, 22:65–23:4). Third, we determined that Petitioner’s analysis was deficient because it did not identify where the same structure, material, or acts or their equivalents were found in the prior art.1 Id. at 12–13.” slip op. at 2

  • BurdenNot shown unpatentable

    “§ 112, ¶ 6, because it did not have a sufficiently definite meaning as a name for structure. Dec. 7–10. Second, we found that Petitioner did not identify corresponding structure, material, or acts in the specification for performing the recited function of guiding the second portions of the right and left foot engagement members to follow a forward-rearward reciprocating motion in response to the user moving the user’s feet with striding steps during the striding exercise as the right and left crank arms reciprocally lift and lower the first portions of the right and left foot engagement members. Id. at 11–12 (quoting Ex. 1001, 22:65–23:4). Third, we determined that Petitioner’s analysis was deficient because it did not identify where the same structure, material, or acts or their equivalents were found in the prior art.1 Id. at 12–13.” slip op. at 2

  Claim construction
  Patents in suitUS 6,689,019
• Edwards Lifesciences Corporation v. Boston Scientific Scimed, Inc.Institution denied
  PTAB · Oct 25, 2017 · IPR2017-01296 · APJ Amanda F Wieker · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of proving the means-plus-function limitations unpatentable over the asserted prior art.

  RulingsInstitution decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner

    “Claim limitations that include the term “means” or “means for” are presumed to invoke 35 U.S.C. § 112 ¶ 6. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348–49 (Fed. Cir. 2015) (en banc in relevant part) (“The converse presumption remains unaffected: ‘use of the word ‘means’ creates a presumption that § 112, ¶ 6 applies.’”); see also Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703 (Fed. Cir. 1998); Greenberg v. Ethicon Endo–Surgery, Inc., 91 F.3d 1580, 1584 (Fed. Cir. 1996) (“[Use] of the term ‘means’ has come to be so closely associated” slip op. at 8

  • BurdenInstitution denied meritsInstitution denied

    “(c) Identification of Corresponding Structure In proceedings before this Board, our Rules require that if a challenged claim contains a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6, Petitioner is required to construe the limitation and to “identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3). Here, the Petition fails to identify any portion of the ’543 patent Specification that describes the structure, material, or acts that correspond to the functions recited in the above-referenced limitations. See Pet. 19; see also 37 C.F.R. § 42.6(a)(3). It is not this panel’s responsibility to identify the portions of the Specification upon which it believes Petitioner may rely to support its positions with respect to 35 U.S.C. § 112 ¶ 6. Our Rules place this burden on Petitioner, so that the panel may evaluate effectively the challenged claims vis-à-vis the asserted prior art, as discussed below.” slip op. at 11

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “limitation is unpatentable over the asserted prior art, Petitioner must show that the structure that corresponds to a claimed function, or its equivalent, is found in, or obvious over, the applied prior art. See Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299–1300 (Fed. Cir. 2009) (“It is firmly established in our precedent that a structural analysis is required when means-plus-function limitations are at issue; a functional analysis alone will not suffice.”) (emphases added). In this case, Petitioner’s failure to construe the claims in accordance with our Rules is determinative. By failing to identify structure, material, or acts in the ’543 patent Specification that correspond to the claimed functions, Petitioner necessarily has not shown where that structure, material, acts, or their equivalents are disclosed in the applied prior art. Compare Pet. 19, with id. at 32 (discussing “expandable inflatable means”), 32–33 (discussing “mounting and retaining means for receiving the stent”), 38 (discussing “means for inflating the balloon”), 47– 48, 52, 61–63, 67, 74, 77. For these reasons, Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of independent claims 1 or 19 based on any of the asserted grounds of unpatentability. Petitioner’s challenges to dependent claims 2, 3, 6–12, 20, 21, and 24–29 similarly fail for the same reasons. III. CONCLUSION For the foregoing reasons, we determine Petitioner has not demonstrated a reasonable likelihood it would prevail in establishing the unpatentability of the challenged claims of the ’543 patent. IV. ORDER Upon consideration of the record before us, it is: ORDERED that the Petition is denied as to all challenged claims, and no trial is instituted.” slip op. at 11

  Claim constructioncites Phillips
  Patents in suitUS 6,007,543
• Edwards Lifesciences Corporation v. Boston Scientific Scimed, Inc.Institution denied
  PTAB · Oct 25, 2017 · IPR2017-01304 · APJ Amanda F Wieker · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted ground.

  RulingsInstitution decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner

    “recite the term “means.” See Ex. 1001, 26:5–6, 26:10–13 (“expandable inflation means . . . for expansion of the stent”; “mounting and retaining means . . . to provide a securement for the stent”). With respect to these limitations, Petitioner contends that these limitations do not invoke 35 U.S.C. § 112 ¶ 6. Pet. 22. Petitioner, however, does not discuss the presumption associated with use of the word “means” in these limitations, and does not provide a single citation to intrinsic or competent extrinsic evidence to suggest that the presumption is unwarranted in this case. Instead, Petitioner simply incorporates by reference a letter between counsel in the co-pending district court litigation. Id. (citing Ex. 1007). Even if Petitioner’s incorporation by reference were proper, but cf. 37 C.F.R. § 42.6(a)(3), the cited letter also fails to explain how or why applicable intrinsic or extrinsic evidence warrants deviating from the presumption that use of the term “means” invokes 35 U.S.C. § 112 ¶ 6. Although this letter suggests that the parties may agree that § 112 ¶ 6 should not apply to these limitations, a non-binding agreement between parties does not constitute persuasive evidence and does not suspend our Rules. See infra Section II.A.3.a. Further, claim construction, and whether § 112 ¶ 6 applies, is a legal determination made based on a hierarchy of evidence–– intrinsic evidence being the most persuasive. In addition to stating that 35 U.S.C. § 112 ¶ 6 does not apply, the Petition also provides constructions for these limitations. Pet. 22. However, the proposed constructions simply reiterate the functions recited by the claims. For example, Petitioner construes “expandable inflation means . . . for expansion of the stent” as “a structure capable of being expanded and inflated.” Id. Petitioner’s contentions in this regard fail to explain how or why Petitioner believes any applicable evidence overcomes the presumption that use of the term “means” invokes § 112 ¶ 6. It is not this panel’s charge to divine the reasoning or justification for Petitioner’s position, without any guiding explanation from Petitioner. Accordingly, absent any persuasive rebuttal, we presume that “expandable inflation means . . . for expansion of the stent” and “mounting and retaining means . . . to provide a securement for the stent” invoke 35 U.S.C. § 112 ¶ 6.” slip op. at 10

  • BurdenInstitution denied meritsDenied

    “challenged claim contains a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6, Petitioner is required to construe the limitation and to “identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3). Here, the Petition fails to identify any portion of the ’558 patent Specification that describes the structure, material, or acts that correspond to the functions recited in the above-referenced limitations. See Pet. 22; see also 37 C.F.R. § 42.6(a)(3). It is not this panel’s responsibility to identify the portions of the Specification upon which it believes Petitioner may rely to support its positions with respect to 35 U.S.C. § 112 ¶ 6. Our Rules place this burden on Petitioner, so that the panel may evaluate effectively the challenged claims vis-à-vis the asserted prior art, as discussed below. B. Asserted Grounds of Unpatentability To show that a challenged claim containing a means-plus-function limitation is unpatentable over the asserted prior art, Petitioner must show that the structure that corresponds to a claimed function, or its equivalent, is found in, or obvious over, the applied prior art. See Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299–1300 (Fed. Cir. 2009) (“It is firmly established in our precedent that a structural analysis is required when means-plus-function limitations are at issue; a functional analysis alone will not suffice.”) (emphases added). In this case, Petitioner’s failure to construe the claims in accordance with our Rules is determinative. By failing to identify the structure, material, or acts in the ’558 patent Specification that correspond to the claimed functions, Petitioner necessarily has not shown where that structure, material, acts, or their equivalents are disclosed in the applied prior art. Compare Pet. 22, with id. at 33–34 (discussing “expandable inflation means . . . for expansion of the stent”), 34–35 (discussing “mounting and retaining means . . . to provide a securement for the stent”), 47–49, 55–57. For these reasons, Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of independent claim 1 based on any of the asserted grounds of unpatentability. Petitioner’s challenges to dependent claims 2, 9, 14, and 20–22 similarly fail for the same reasons.” slip op. at 11

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “limitation is unpatentable over the asserted prior art, Petitioner must show that the structure that corresponds to a claimed function, or its equivalent, is found in, or obvious over, the applied prior art. See Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299–1300 (Fed. Cir. 2009) (“It is firmly established in our precedent that a structural analysis is required when means-plus-function limitations are at issue; a functional analysis alone will not suffice.”) (emphases added). In this case, Petitioner’s failure to construe the claims in accordance with our Rules is determinative. By failing to identify the structure, material, or acts in the ’558 patent Specification that correspond to the claimed functions, Petitioner necessarily has not shown where that structure, material, acts, or their equivalents are disclosed in the applied prior art. Compare Pet. 22, with id. at 33–34 (discussing “expandable inflation means . . . for expansion of the stent”), 34–35 (discussing “mounting and retaining means . . . to provide a securement for the stent”), 47–49, 55–57. For these reasons, Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of independent claim 1 based on any of the asserted grounds of unpatentability. Petitioner’s challenges to dependent claims 2, 9, 14, and 20–22 similarly fail for the same reasons. III. CONCLUSION For the foregoing reasons, we determine Petitioner has not demonstrated a reasonable likelihood it would prevail in establishing the unpatentability of the challenged claims of the ’558 patent. IV. ORDER Upon consideration of the record before us, it is: ORDERED that the Petition is denied as to all challenged claims, and no trial is instituted.” slip op. at 12

  Claim constructioncites Phillips
  Patents in suitUS 6,203,558

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