- PTAB · Mar 19, 2024 · PGR2022-00052 · APJ Sheila F Mcshane · PGR · Final written decision
The Board cancelled claims 1–27 and denied substitute claims 28–51 because the original disclosure lacked written-description support for the claimed CSP limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In our Institution Decision, we adopted Petitioner’s proposed level of ordinary skill in the art, with the exclusion of “at least” because it introduces ambiguity. Inst. Dec. 8. Patent Owner “does not dispute the Board’s findings on the qualifications of a POSA [person of ordinary skill in the art] for purposes of this proceeding.” See RMTA 13. We determine that Petitioner’s definition, with the exclusion of “at least,” is consistent with the prior art of record and the skill reflected in the Specification of the ’034 patent and we use this level of skill here in the evaluation of the Revised Motion to Amend.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Patent Owner argues that “claim construction is not necessary” and that “the meaning of the claims would be easily understood by a POSA.” RMTA 13. In the Petition, Petitioner proposed constructions for the terms “client device” and “first server,” and the original claims were rendered obvious under this construction. Pet. 23–27. Petitioner does not assert that the substitute claims of the Revised Motion to Amend are anticipated or rendered obvious by prior art or are patent ineligible. See generally RMTA Opp. Nor does Petitioner’s patentability challenge of the substitute claims contend that express construction is needed. See generally id. For purposes of this Decision, we determine that express claim construction is unnecessary. We need only construe terms that are necessary to resolve disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 10
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDenied
“written description requirement. In re Wright, 866 F.2d 422, 425 (Fed. Cir. 1989); All Dental Prodx LLC v. Advantage Dental Prods., 309 F.3d 774, 779 (Fed. Cir. 2002). The issue here, however, is whether the disclosure of the ’034 patent would have reasonably conveyed to a person of ordinary skill that the inventors had possession of the CSP Limitations. Ariad, 598” slip op. at 14
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“to cancelling claims 1–27; and deny-in-part the Motion to Amend as to proposed substitute claims 28–51. In summary: Motion to Amend Outcome Claim(s) Original Claims Cancelled by Amendment 1–27 Substitute Claims Proposed in the Amendment 28–51 Substitute Claims: Motion to Amend Granted Substitute Claims: Motion to Amend Denied” slip op. at 20
Claim construction§ 112 disclosurePatents in suitUS 11,272,034 - PTAB · Feb 14, 2018 · IPR2016-01600 · APJ Lynne E Pettigrew · IPR · Final written decision
The Board granted cancellation of claims 1, 2, 5, and 9 but denied substitute claims 13–16 because the application lacked written description support for the added limitation.
RulingsFinal written decision- 112 supportMotion to amend, deniedDenied
“Under the correct test for compliance with the written description requirement, Patent Owner’s arguments and evidence do not establish that the ’642 application provides written description support for a variable current limit threshold increasing “during at least a portion of the first state.” The only embodiment disclosed in the ’642 application shows a current limit threshold that increases during the entire on time of the switch (i.e., the entire first state), and the ’642 application never describes a current limit threshold that increases during only a portion of the on time of the switch. Patent Owner’s Motion to Amend and Dr. Kelley’s declaration testimony in support thereof rely exclusively on portions of the ’642 application describing a threshold that increases throughout the on time of the switch. See Mot. 10–13; Ex. 2010 ¶¶ 62–65. Patent Owner and Dr. Kelley do not specifically address the “at least a portion of” claim language and thus fail to explain adequately how the disclosure of a threshold that increases throughout the on time of the switch would reasonably convey to a person having ordinary skill in the art that the inventor had possession of a current limit threshold that increases for “at least a portion of” the first state. Therefore, Patent Owner’s arguments and submitted testimony are unsupported and conclusory with regard to written description support for the “at least a portion” language, and indeed are inconsistent with the disclosure in the ’642 application, which provides support only for a current limit threshold that increases during the entire first state.” slip op. at 22
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Owner asserts that a person of ordinary skill in the art at the time of the invention of the ’605 patent “would have had a bachelor’s degree in electrical engineering, physics, or a related discipline, and at least two to three years of relevant experience in the field of power electronics or similar circuitry.” Mot. 3 (citing Ex. 2010 ¶ 22). Patent Owner further asserts that “[a]dditional education, such as an advanced degree in electrical engineering or a related field, might substitute for some of the experience, and substantial experience might substitute for some of the educational background.” Id. (citing Ex. 2010 ¶ 22). Petitioner’s declarant, Dr. Douglas Holberg, has a similar view, opining that a person of ordinary skill in the art at the time of the invention would have had “a B.S. in Electrical Engineering or a related field with at least two years of experience in designing power electronics,” or “an M.S. in Electrical Engineering or a related field.” Ex. 1003 ¶ 38. The two formulations do not differ in any material way. Based on our review of the record, we agree with the parties as to the level of ordinary skill in the art. For purposes of analyzing the Motion to Amend, we specifically adopt Patent Owner’s definition of a person of ordinary skill in the art. See Mot. 3; Ex. 2010 ¶ 22.” slip op. at 14
- Expert testimonyPatent owner expert discountedDecided for petitioner
“We disagree for two reasons. First, under Aqua Products, as explained further in the Office’s post-Aqua Products guidance document, a patent owner must still meet the statutory and regulatory requirements for a motion to amend, including setting forth written description support for amended claims, which must not introduce new matter. Aqua Prods., 872 F.3d at 1305–06; Guidance 2. Second, Dr. Kelley’s conclusion that the ’642 application provides written description support for “the variable current limit threshold increases during at least a portion of the first state of each control signal cycle” is conclusory and inconsistent with the intrinsic evidence (i.e., the ’642 application itself), and we therefore give his testimony on this point little weight.” slip op. at 23
- BurdenDecided for petitioner
“We disagree for two reasons. First, under Aqua Products, as explained further in the Office’s post-Aqua Products guidance document, a patent owner must still meet the statutory and regulatory requirements for a motion to amend, including setting forth written description support for amended claims, which must not introduce new matter. Aqua Prods., 872 F.3d at 1305–06; Guidance 2. Second, Dr. Kelley’s conclusion that the ’642 application provides written description support for “the variable current limit threshold increases during at least a portion of the first state of each control signal cycle” is conclusory and inconsistent with the intrinsic evidence (i.e., the ’642 application itself), and we therefore give his testimony on this point little weight.” slip op. at 23
NonePatents in suitUS 7,834,605 - PTAB · May 3, 2016 · IPR2015-00556 · APJ David C Mckone · IPR · Final written decision
The Board canceled claims 6–8, 12–14, and 18–20 at Patent Owner’s request and denied entry of substitute claims 23–28 for lack of written-description support and failure to show nonobviousness.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“only upon Patent Owner’s having demonstrated the patentability of the substitute claims. As the moving party, Patent Owner bears the burden of proof to establish that it is entitled to the relief requested. See 37 C.F.R. § 42.20(c). The amendment must respond to a ground of unpatentability involved in the trial and must not seek to enlarge the scope of the claims or introduce new subject matter. See 37 C.F.R. § 42.121(a)(2). As we have stated, “[f]or a patent owner’s motion to amend, 37 C.F.R. § 42.20(c) places the burden on the patent owner to show a patentable distinction of each proposed substitute claim over the prior art.” Idle Free Sys., Inc. v. Bergstrom, Inc., Case IPR2012-00027, slip op. at 7 (PTAB June 11, 2013) (Paper 26). Such prior art may include: a. any material art in the prosecution history of the patent; b. any material art of record in the current proceeding, including art asserted in grounds on which the Board did not institute review; and c. any material art of record in any other proceeding before the Office involving the patent.” slip op. at 4
- Strike new argumentNew argument consideredDecided for patent owner
“Additional motions to amend may be permitted upon the joint request of the petitioner and the patent owner to materially advance the settlement of a proceeding under section 317, or as permitted by regulations prescribed by the Director.” 35 U.S.C. § 316(d)(2). To that end, 37 C.F.R. § 42.121(c) provides: In addition to the requirements set forth in paragraphs (a) and (b) of this section, any additional motion to amend may not be filed without Board authorization. An additional motion to amend may be authorized when there is a good cause showing or a joint request of the petitioner and the patent owner to materially advance a settlement. In determining whether to authorize such an additional motion to amend, the Board will consider whether slip op. at 9
- Skill levelSkill level board ownDecided for petitioner
“had a BS degree in engineering, knowledge of cellular telephone technology, and two to four years of experience designing, optimizing, and/or testing portable, battery-operated products. Pet. 18. Petitioner supports its argument with Mr. Wojcik’s testimony (Ex. 1124 ¶¶ 57–60), which does not itself cite evidence. In its Motion, Patent Owner argues that a skilled artisan would have had at least two to five years of experience working in the field of sobriety monitoring, developing sobriety monitoring and treatment programs. Mot. 4. Patent Owner also argues that a skilled artisan would have had a practical understanding of methodologies used to monitor sobriety and an understanding of human behavioral patterns as they relate to alcohol addiction. Id. at 4–5. Patent Owner cites to Dr. Jaffe (Ex. 2000 ¶ 13), whose testimony is as conclusory and devoid of evidence as Mr. Wojcik’s. In IPR-577, we found that the level of ordinary skill in the art is reflected in the prior art itself, reflects solutions to engineering problems, and does not require a physician’s knowledge of the behavior of alcoholics. IPR-577 FWD, 17–19. On the record of the current proceeding, considering similar testimony and substantially the same prior art, we maintain the finding that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 27
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We read the Specification’s use of “discrete” rather than “discreet” to be an obvious typographical error. We note that the Specification includes other instances in which it erroneously uses “discrete” where context calls for “discreet.” For example, in describing concerns with remote monitoring of blood alcohol levels using ankle bracelets, the Specification explains that “users are often stigmatized by their indiscrete presence and therefore find healthy societal interaction while wearing such bracelets difficult.” Ex. 1102, 2:14–17 (emphasis added); see also id. at 1:66–2:5 (“Thus, the discrete remote monitoring of a person under such a program by the court, or other authority, without requiring the monitored person to excuse themselves from society for more than a brief period of time would be useful in reintegrating the monitored person into society without the awkward and embarrassing effects of traditional monitoring procedures.”). Thus, the use of “discreet” in the proposed substitute claims is not new matter. Petitioner further contends that this claim phrase “wherein the case is a size that can be discreetly concealed” is indefinite. Specifically, Petitioner argues that the Specification provides “no reasonable certainty as to how big a manufacturer needs to make the breath testing device case such that the skilled artisan would consider the case to not be discreetly concealable.” Opp. 9. We are not persuaded that this limitation is indefinite. Rather, the Specification provides a standard for measuring whether a device can be discreetly concealed, namely “it is readily able to be carried by hand, or inserted in to a handbag, purse, pocket or the like.” Ex. 1102, 5:47–50. This is consistent with the dictionary provided by Petitioner, defining “discreet” to mean “unobtrusive, unnoticeable.” Ex. 1162. Thus, “wherein the case is a size that can be discreetly concealed” means that the size is unobtrusive such that it can be carried by hand, or concealed in a handbag, purse, pocket, or the like. Nevertheless, a device of “a size that can be discreetly concealed” is not distinguishable from “[a] portable, cordless, hand-held” device, as recited in original claims 1 and 15. That language is supported by the same description in the Specification. Tellingly, Patent Owner also provides constructions for “hand-held” and “portable,” namely “designed to be operated while being held in the hand” and “easy to carry or move around,” respectively. Reply 4. At the oral argument, Patent Owner was unable to provide a meaningful distinction between a device that can be discreetly concealed and one that is portable and handheld. Tr. 11:19–13:4. We see no evidence that sufficiently supports a distinction between these two phrases.” slip op. at 14
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 8,381,573
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.