• SZ Dji Technology Co., Ltd. / Parrot Inc. v. Drone-Control, LLCAll claims unpatentable
  PTAB · Jun 11, 2019 · IPR2018-00207 · APJ Frances L Ippolito · IPR · Final written decision

  Claims 1–15 are unpatentable: claims 1, 3–6, 8–11, and 13–15 are anticipated by Thornberg ’983; claims 2, 7, and 12 are obvious over Thornberg ’983 and Karem. The motion to amend is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner did not file a Patent Owner Response and has not otherwise disputed Petitioner’s proposed level of skill. See Tr. 77:1–6. We find, based on our review of the complete record, that the evidence of record supports a level of ordinary skill in the art consistent with Petitioner’s definition. Our findings are supported by the level of ordinary skill in the art reflected by the prior art of record and the ’116 patent. See Ex. 1001, 1:36–37 (“This invention relates generally to radio controlled toys such as airplanes and helicopters.”); Ex. 1006, 1:8–10 (“The present invention relates to the control of remotely operated vehicles, and more particularly to a variable reference for the control of a remotely operated vehicle.”), see id. at 3:41–44 (“The system provides for the referencing of vehicle commands based on an operator frame of reference so that control commands provided by the operator remain intuitive and independent of the orientation of the vehicle with respect to the operator.”). Thus, we adopt Petitioner’s proposed level of ordinary skill in the art and apply it to our discussion below.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Ex. 1006, 5:22–29. We further observe that once the disclosed pitch/roll commands (i.e., command data) are provided to the pitch axis and roll axis transformation functions, the pitch axis transformation 410 and roll axis transformation 412 use transformation equations to determine a transformed pitch stick signal (TPSS) and a transformed roll stick signal (TRSS). See Ex. 1006, 6:17–28. In other words, the flight control computer transforms received command pitch/roll data into TPSS and TRSS commands. In performing this transformation, the pitch axis transformation function 410 and the roll axis transformation function 412 also receive a transformation angle (θ) input. Id. at 5:30–32. Thornberg ’983 teaches that the transformation angle θ is determined based on the true heading of the vehicle as determined by the navigation system 36 and the desired vehicle reference and vehicle reference mode. Id. at 5:31–35. As discussed above, we find that the true heading of the vehicle as determined by navigation system 36 provides motion data generated by a sensor. Thornberg ’983 teaches that the transformations into TPSS and TRSS take into account transformation angle (θ), which Thornberg ’983 teaches is determined based on the true heading (i.e., motion data) of the vehicle and the control data (pitch/roll commands) received from control panel 200 of the remote operator control. See Ex. 1006, 4:29–33, 5:23–25, 5:36–38. Further, in the operator reference mode, the orientation of the operator/remote control upon activation of the operator mode is used as the reference axis (i.e., operator’s coordinate system). Additionally, as noted in the Petition (see Pet. 30–31), Thornberg ’983 teaches a variable operator reference mode in which the operator reference changes based on changes in the orientation of the operator control panel. Ex. 1006, 7:32–35. Based on the disclosure discussed above, we find that the pitch and roll commands received at lines 405, 415 in the operator mode teach command data in “a first coordinate system from a perspective of the remote control device” as recited in claim 1. Moreover, we find that Thornberg ’983 teaches that the received pitch/roll command data is transformed into control data in “a second coordinate system that is from a perspective of the RC aircraft.” Specifically, Thornberg ’983 teaches that the transformation equations 1 and 2 transform the pitch command and roll command based on the difference between the aircraft heading and the reference heading. See Ex. 1066, 7:9–11, 7:19–24. Further, Dr. Hansman testifies that TPSS and TRSS control data control the vehicle in the vehicle’s coordinate system, which is from the perspective of the vehicle. Ex. 1003 ¶ 411. We credit Dr. Hansman’s undisputed testimony in this regard because this testimony is consistent with the disclosure of Thornberg ’983, which teaches, among other things, that “[t]he system provides for the referencing of vehicle commands based on an operator frame of reference so that control commands provided by the operator remain intuitive and independent of the orientation of the vehicle with respect to the operator.” Ex. 1006, 3:41–44.” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable

    “[a] POSITA would have been motivated to modify Thornberg’s control panel 200 to “control” the UAV 100 in a hovering state, i.e., by sending appropriate lift command data to the vehicle when the operator releases the input controls as Karem teaches, in order to facilitate aerial tasks that may involve a hovering state, such as airborne surveillance, inspection, maintenance, and repair, that Thornberg teaches were “well known” uses of UAVs. Ex. 1006, 1:15-24; Ex. 1003, ¶443. Pet. 45. We are persuaded that Petitioner’s rationale and evidence demonstrate by a preponderance of the evidence that claims 2, 7, and 12 would have been obvious in view of Thornberg ’983 and Karem. For example, Petitioner’s arguments are supported by the disclosure of Karem, which teaches a remotely-operated vehicle in a hovering state (Ex. 1008, 7:13–23, 32–39, and Thornberg ’983 teaches remotely operated vehicles include helicopters (Ex. 1006, 1:14–17). Further, Petitioner’s arguments are supported by Dr. Hansman’s undisputed testimony that a POSITA would have been motivated to modify Thornberg ’983’s control panel 200 to control UAV 100 in a hovering state, i.e., by sending appropriate lift command data to the vehicle when the operator releases the input controls as Karem teaches, in order to facilitate aerial tasks that may involve a hovering state, such as airborne surveillance, inspection, maintenance, and repair. Ex. 1003 ¶ 443. This testimony is supported by Thornberg ’983’s teaching that (1) airborne surveillance, inspection, maintenance, and repair were well known uses of UAVs; and (2) remote operation of UAVs apply to remotely operated helicopters. See Ex. 1006, 1:15–24.” slip op. at 29

  • Expert testimonyPetitioner expert creditedOther

    “In the same manner described in the ’116 patent, we find that the orientation of the control panel in Thornberg ’983 indicates the angular displacement (i.e., position data) of the vehicle relative to the operator mode reference axis because the control panel is directed toward the vehicle. Thornberg ’983’s Figure 2 discloses that the control panel is directly facing the remotely operated vehicle, which is nearly identical to placement of the remote control device and RC aircraft in Figure 5 of the ’116 patent. Ex. 1001, 3:67–4:2, Fig. 5; Ex. 1006, Fig. 2.” slip op. at 50

  Patent outcomesUS 9,079,116 unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 9,079,116
• SZ Dji Technology Co., Ltd. v. Drone-Control, LLCAll claims unpatentable
  PTAB · May 29, 2019 · IPR2018-00206 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–18 are unpatentable, principally because Thornberg ’983 anticipates them or renders them obvious; the contingent motion to amend is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have an equivalent of a Bachelor’s degree from an accredited institution in electrical engineering, mechanical engineering, aeronautical or astronautical engineering, robotics, computer science, or any other discipline covering principles of design, operation, and/or control of unmanned aerial vehicles, including remote-controlled vehicles, and would have a working knowledge of the design, development, implementation, or deployment of such technologies. Additional education could substitute for experience, and significant experience could substitute for formal education. Pet. 12 (citing Ex. 1003 ¶ 28). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. See Tr. 77:1–6; see also Ex. 2005 ¶ 48 (Patent Owner’s declarant adopting this definition of the person of ordinary skill in the art for purposes of declaration testimony).” slip op. at 12

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

    “The only question, then, is whether orientation data can suffice by itself to qualify as “motion data,” as Petitioner contends, or whether data indicating a change in the vehicle’s position is essential, as Patent Owner argues. On that question, we agree with Petitioner that orientation data is sufficient. The Specification describes that motion sensing module 122 generates motion data 124 based on the motion of the aircraft and that motion sensing module 122 includes one or more axes of accelerometers or gyroscopes or other devices that alone, or with further processing by processing module 126, can generate data that represents θ, φ3, and/or other motion parameters such as R, Z, etc., that can be used in transforming the command data 104 to control data 128. Ex. 1001, 5:6–11 (emphases added). This disclosure supports a broad understanding of “motion data” as any data generated by the sensing module that represents a position, orientation, or motion parameter.” slip op. at 17

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Based on the complete record, we are persuaded by Petitioner’s contention. Although Thornberg ’983 does not state explicitly that the signals transmitted from the control panel to the vehicle are RF signals, we agree that a skilled artisan, considering the context of Thornberg ’983’s disclosure, would have recognized that the transmitted signals could comprise RF signals. “What a reference teaches or suggests must be examined in the context of the knowledge, skill, and reasoning ability of a skilled artisan,” and “is not . . . limited to what a reference specifically ‘talks about’ or what is specifically ‘mentioned’ or ‘written’ in the reference.” Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005); see also Manual of Patent Examining Procedure (“MPEP”) § 2144.01 (“[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.”) (quoting In re Preda, 401 F.2d 825, 826 (CCPA 1968)). Furthermore, we credit Dr. Hansman’s testimony that an ordinarily skilled artisan would understand Thornberg ’983’s disclosure to mean that the transmitted control signals “are radio frequency (RF) signals, as antennas are most commonly used for.” Ex. 1003 ¶ 295.” slip op. at 25

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We are persuaded by Petitioner’s assertion that Thornberg ’983’s flight control computer 38 corresponds to the claimed processing module. As discussed above (see supra § III.D.1), flight control computer 38 is provided with transformation function 400. Ex. 1006, 5:9–12. Transformation function 400 receives an input of command data (the pitch command and the roll command) from the control panel through antenna 42 and an input of the transformation angle, θ, which is based on the true heading of the vehicle provided by navigation system 36. Id. at 5:19–31, Fig. 6. Transformation function 400 (via pitch axis transformation function 410 and roll axis transformation function 412) transforms the pitch command and the roll command into a transformed pitch stick signal (TPSS) and a transformed roll stick signal (TRSS) using equations that are based on the transformation angle. Id. at 6:17–28. When the system is in the operator reference mode, the TPSS and TRSS (i.e., control data) are in accordance with a second coordinate system that is from a perspective of the vehicle. Id. at 6:8–11 (“In an operator reference mode, the orientation of the operator upon activation of the operator mode is used as the reference axis.”). Patent Owner argues that Thornberg ’983 does not disclose transforming command data into control data based on motion data. PO Resp. 8–13; Sur-Reply 6–8. Patent Owner agrees that, in Thornberg ’983, transformation uses transformation angle θ, which is determined based on the vehicle’s true heading. PO Resp. 8. But Patent Owner contends that transformation angle θ is not “motion data” because it is solely an indication of orientation. Id. (citing Ex. 2005 ¶¶ 74–75). The distinction Patent Owner urges between Thornberg ’983 and the claimed subject matter is based on Patent Owner’s proposed construction of “motion data” as requiring data indicative of a change in position. See id. at 8–9; see also Tr. 103:1–8. For the reasons discussed in Section III.C., we decline to adopt Patent Owner’s proposed construction. Under the construction we have adopted, Thornberg ’983’s transformation angle θ is motion data because, as both parties agree, it indicates the vehicle’s orientation.” slip op. at 28

  Patent outcomesUS 8,649,918 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,649,918
• SZ Dji Technology Co., Ltd. v. Synergy Drone LLCAll claims unpatentable
  PTAB · May 23, 2019 · IPR2018-00205 · APJ Timothy J Goodson · IPR · Final written decision

  Claims 1–18 are unpatentable, principally because Thornberg-983 anticipates or renders them obvious; the contingent motion to amend is denied for lack of written-description support.

  RulingsFinal written decision

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

    “itself to qualify as “motion data,” as Petitioner contends, or whether data indicating a change in the vehicle’s position is essential, as Patent Owner argues. On that question, we agree with Petitioner that orientation data is sufficient. The Specification describes that motion sensing module 122 generates motion data 124 based on the motion of the aircraft and that motion sensing module 122 includes one or more axes of accelerometers or gyroscopes or other devices that alone, or with further processing by processing module 126, can generate data that represents θ, φ3, and/or other motion parameters such as R, Z, etc., that can be used in transforming the command data 104 to control data 128. Ex. 1001, 4:66–5:4 (emphasis added). This disclosure supports a broad understanding of “motion data” as any data generated by the sensing module that represents a position, orientation, or motion parameter.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “For the purposes of our Decision on Institution, and based on the record at that preliminary stage, we adopted Petitioner’s proposal that an ordinarily skilled artisan at the time of the invention of the ’368 patent would have had the following education and experience: [A] Bachelor’s degree from an accredited institution in electrical engineering, mechanical engineering, aeronautical or astronautical engineering, robotics, computer science, or any other discipline covering principles of design, operation, and/or control of unmanned aerial vehicles, including remote-controlled vehicles, and would have a working knowledge of the design, development, implementation, or deployment of such technologies. Additional education could substitute for experience, and significant experience could substitute for formal education. Dec. on Inst. 9 (citing Pet. 12; Ex. 1003 ¶ 28). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. See Tr. 77:3– 6. Based on our review of the complete record, we find that the evidence supports the level of ordinary skill in the art set forth above. Thus, we adopt Petitioner’s proposed level of ordinary skill in the art and apply it in our analysis below.” slip op. at 15

  • Expert testimonyPetitioner expert creditedOther

    “Looking at the first portion of the block quote, as Dr. Hansman observes, “[m]otion sensing module 122 is not limited to any specific technology and can therefore include gyroscopes that measure changes in orientation or accelerometers used to measure change in position.” Ex. 1023 ¶ 32. The Specification’s description that the “motion sensing module 122 includes one or more axes of accelerometers or gyroscopes or other devices” indicates that some embodiments include only gyroscopes, which are devices that provide information about orientation. Ex. 1001, 4:66–67 (emphasis added). Turning to the second portion of the passage block quoted above — i.e., that motion sensing module 122 includes devices that “can generate data that represents θ, φ3, and/or other motion parameters such as R, Z, etc., that can be used in transforming the command data 104 to control data 128” (Ex. 1001, 5:1–4) — we find persuasive Dr. Hansman’s testimony that an ordinarily skilled artisan would understand this passage to signify that “the motion data generated by motion sensing module 122 can be data reflecting any one, or several, or all of the mentioned parameters.” Ex. 1023 ¶ 32. Because φ3, which represents the aircraft’s orientation, is one of the mentioned parameters, this means that motion data can reflect orientation data alone. Ex. 1001, 3:46–47, 3:30–31, 5:2. We also note that Dr. Murphy’s testimony was in accord when he testified during cross-examination that “[m]otion data could be position data, it could be orientation data, or it could be a combination of position and orientation” and that he understands his own declaration to “say[] the same thing.” Ex. 1019, 96:12–15; see also id. at 61:18–19 (“Motion could be a change in only Phi 3. Yes. That’s correct.”).” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “d. Limitation [d]: “a processing module, coupled to the motion sensing module and the receiver, that transforms the command data into control data, based on the motion data, and in accordance with a second coordinate system, wherein the second coordinate system is from a perspective of the RC aircraft” We are persuaded by Petitioner’s argument that Thornberg-983’s flight control computer 38 discloses the claimed “processing module.” See Pet. 31–33. Thornberg-983’s flight control computer 38 is coupled to navigation system 36 and communications equipment 40. Ex. 1006, 4:12– 16, Figs. 5–6. Flight control computer 38 receives roll and pitch commands from communications equipment 40 and transforms those commands into transformed pitch stick signal (TPSS) and transformed roll stick signal (TRSS). Id. at 4:44–52, 5:9–12, 5:20–23, 6:17–28. These transformations are “based on the motion data” as claimed because they use the transformation angle θ determined from the true heading measured by navigation system 36. Id. at 5:30–35, 6:22, 6:27. Thornberg-983 also discloses that the control data can be in a coordinate system that is from the aircraft’s perspective, as claimed, because in one mode of operation, “the vehicle reference for purposes of vehicle control is the forward reference position on the aircraft.” Id. at 5:56–59; Ex. 1003 ¶ 201. Patent Owner argues that Thornberg-983 does not disclose transforming command data into control data based on motion data. PO Resp. 8–13; Sur-Reply 6–8. Patent Owner agrees that in Thornberg-983, transformation uses transformation angle θ, which is determined based on the vehicle’s true heading. PO Resp. 8. But Patent Owner contends that transformation angle θ is not “motion data” because it is solely an indication of orientation. Id. (citing Ex. 2005 ¶¶ 74–75). The distinction Patent Owner urges between Thornberg-983 and the claimed subject matter is based on Patent Owner’s proposed construction of “motion data” as requiring data indicative of a change in position. See id. at 8–9; see also Tr. 103:1–8. For the reasons discussed in Section II.A., we decline to adopt Patent Owner’s proposed construction. Under the construction we have adopted, Thornberg- 983’s transformation angle θ is motion data because, as both parties agree, it indicates the vehicle’s orientation. e. Limitation [e]: “a plurality of control devices, coupled to the processing module, that control the motion of the RC aircraft based on the control data” We are persuaded by Petitioner’s argument that Thornberg-983’s pitch flight control system and roll flight control system disclose the claimed “control devices” because they are coupled to flight control computer 38 and they control the pitch and roll motion of the vehicle based on the transformed TPSS and TRSS data. See Pet. 33 (citing Ex. 1006, 6:16–28; Ex. 1003 ¶ 203). f. Conclusion Regarding Claim 1 We determine that Petitioner has proven by a preponderance of the” slip op. at 22

  Patent outcomesUS 8,380,368 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,380,368
• Caterpillar Inc. v. Ernie BrookinsAll claims unpatentable
  PTAB · Sep 11, 2018 · IPR2017-01020 · APJ Jill D Hill · IPR · Final written decision

  Claims 1–10 are unpatentable: claims 1, 2, 6, and 7 as anticipated by Keiser and all claims under the stated obviousness grounds.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “3. “Rotational Power Distribution and Control System” Patent Owner repeats the same unsuccessful argument made in its Patent Owner Preliminary Response concerning limiting the phrase “rotational power distribution and control system” to a “fluid controlled resistance brake” because of the restriction requirement during prosecution. PO Resp. 3, 7–11. Patent Owner specifically argues that “[t]he patent application was restricted by the examiner to that of a ‘fluid controlled resistance brake’ (a hydraulic clutch) that takes the place of a standard clutch or torque converter and does not change gear ratio.” PO Resp. 8. Petitioner counters that Patent Owner does not cite to any authority that supports its novel proposition that election of a species during prosecution necessarily limits the scope of the claims, and that Patent Owner fails to “address the Board’s prior determination in any manner.” Reply 4. We agree. In our Decision on Institution, we preliminarily declined to limit the scope of 1 Patent Owner notes a claim construction ruling by a District Court in another proceeding involving the ’290 patent, construing “gear set” to mean “a gear set with three rotational interfaces.” Prelim. Resp. 14; Ex. 2001 at 15. claims 1–10 narrowly to include only the hydraulic clutch embodiment of Figures 1–3, or a “fluid controlled resistance brake” as argued by the Patent Owner. See PO Resp. 3, 7–8. Dec. on Inst. 11–12. Based on further review of the record, including the prosecution history and details of the restriction and election, we decline to limit the phrase “rotational power distribution and control system” to a “fluid controlled resistance brake” for the reasons provided in the Decision on Institution.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner, relying on the testimony of its declarant, contends that “[a] person of ordinary skill in the art at the time of the invention (“POSITA”) of the ’290 patent would have a degree in mechanical engineering or equivalent, and 3–5 years’ experience in the research, development, or application of hydraulic systems.” Pet. 12 (citing Ex. 1002 ¶¶ 14–17). According to Petitioner, “[t]his level of skill is approximate and more experience would compensate for less formal education, and vice versa.” Id. (citing Ex. 1002 ¶¶ 14–17). Although Patent Owner disagreed with Petitioner’s proposed definition in its Patent Owner Preliminary Response,2 Patent Owner does not dispute this contention directly in its Patent Owner Response. See, generally, PO Resp. Based on the entire record, we agree with Petitioner’s assessment, and find that a POSITA “would have [had] a degree in mechanical engineering or equivalent, and 3–5 years’ experience in the research, development, or application of hydraulic systems, and that significant experience with, or an understanding of hydraulic systems, would compensate for a formal degree.” Pet. 12. We also note that the cited references reflect the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself can reflect the appropriate level of skill in the art”).” slip op. at 13

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Additionally, we credit the testimony of Petitioner’s expert, Monika Ivantysynova, that the casing 110 of Keiser’s variator pump 100 shown in its Figure 9 “is the claimed ‘cylinder block’ recited in claim 1 of the ’290 patent,” such that Keiser’s variator pump 100 – and thus its cylinder block 110 – is disclosed as coupled to the sun gear. Ex. 1002, p. 28. According to Ms. Ivantysynova, Keiser’s cylinder block 110 “is interconnecting to the sun gear via the variator pump 100 (a power transfer mechanism) that is disposed outside of the continuously variable connection, i.e., not through a planetary [or differential] gear set.” Id. at 28–29 (citing Ex. 1004, 37:1–4). Patent Owner’s argument regarding a gear ratio change is not convincing because it is not commensurate with the scope of the claim. That is, the language of claim 1 does not recite coupling without a gear ratio change, and Patent Owner has not provided evidence or explanation regarding why the recitation of claim 1 necessitates a lack of gear ratio change. Based on the entire record, Petitioner presents sufficient arguments and credible evidence to support a finding that Keiser discloses “a cylinder block of said hydrostatic pump being coupled to one of said gear set” as required by claim 1.” slip op. at 26

  • BurdenUnpatentable

    “While an anticipatory reference “must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures,” (see Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (quoting In re Arkley, 455 F.2d 586, 587 (CCPA 1972)), the portions of Keiser on which Petitioner relies are directly related to each other by Keiser’s teachings that the pump of Keiser’s Figure 9 is an exemplary embodiment of a variator pump 14 as disclosed in Keiser’s Figure 1. See Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1343 (Fed. Cir. 2016) (distinguishing NetMoneyIN when the reference in question explicitly contemplated the combination of the disclosed functionalities).” slip op. at 25

  Patent outcomesUS 7,824,290 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,824,290
• Carefusion Corporation v. Baxter International, Inc.All claims unpatentable
  PTAB · Jan 17, 2018 · IPR2016-01460 · APJ Amanda F Wieker · IPR · Final written decision

  Claims 1–4 are unpatentable as obvious over the combined teachings of Layman and Gargano.

  RulingsFinal written decision

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

    “In light of the full record developed during trial, we agree with Patent Owner that Petitioner’s construction is improperly limiting. PO Resp. 9–13; Dec. on Inst. 8. Challenged claim 1 does not specify how the circuit determines the remaining time of charge, other than to require it “respon[d] to the monitoring circuit.” Ex. 1001, 15:42–43. By contrast, claim 9 explicitly limits the determination by stating, “determining from the voltage and the current the remaining time of charge.” Id. at 16:32–33 (emphasis added). We will not, through claim construction, import limitations into claim 1 that are not recited. See, e.g., U.S. v. Telectronics, Inc., 857 F.2d 778, 783–784 (Fed. Cir. 1988) (“‘There is presumed to be a difference in meaning and scope when different words or phrases are used in separate claims. . . .’ ‘Where some claims are broad and others narrow, the narrow claim limitations cannot be read into the broad.’”) (citations omitted).” slip op. at 6

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

    “These limitations recite the term “means” and, as such, we presume they 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) (“‘[U]se of the word ‘means’ creates a presumption that § 112, ¶ 6 applies.’”). Accordingly, we agree with Petitioner that construction of these limitations is necessary in order to apply properly the asserted prior art to the relevant claim limitations. 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.”). In their post-institution papers, neither party provides evidence or argument to support a different construction of these limitations. Accordingly, we discern no reason to address or alter our initial construction of these limitations for the purposes of this Final Written Decision.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner relies on the First Heim Declaration and contends that such a person would have had “an engineering degree and at least six years’ experience designing medical devices using electronics and electro-mechanical components (e.g., infusion pumps) powered by batteries.” PO Resp. 7–8 (citing Ex. 2001 ¶¶ 43–44). Primarily, the parties’ assessments of the skill level of a person of ordinary skill in the art differ in that Patent Owner contends that such a person would have had six years of experience designing medical devices, instead of two years of experience, and further contends that this experience would relate specifically to medical devices that are powered by batteries. Compare PO Resp. 7–8, with Pet. 10–11. Based on our review of the ’034 patent, the types of problems and solutions described in the ’034 patent and in the applied prior art, and the testimony of Dr. Xu and Mr. Heim, we determine that Petitioner’s assessment of the skill level of a person of ordinary skill in the art is most consistent with this evidence. Specifically, the ’034 patent and the asserted prior art relate to various different aspects of infusion pump technology, including processing, power management (by both external and internal battery sources), device display, and infusion pumping. See generally Ex. 1001; Ex. 1004; Ex. 1005. In light of these broad disclosures, we conclude that the appropriate level of skill in the art is not as narrow or specialized as Patent Owner proposes. We note that our conclusions herein would not differ under either party’s assessment.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “regarding claim 2, Petitioner has shown that Layman inherently discloses “means for sampling” voltage and current. The Petition’s contention that a single circuit cannot process two signals simultaneously is supported by the Xu Declaration. Dr. Xu states: [S]uch a person [of ordinary skill in the art] would have known and easily understood that a single analog-to-digital converter channel cannot sample two analog signals simultaneously. Rather, such a circuit samples the signals one at a time. As such, some sort of switch or addressing device would have been used to direct the circuit to sample the correct signal at the proper time. See Ex. 1003 ¶ 16. According to Dr. Xu, this would have been a “basic engineering and physics principle[]” that “would have been readily apparent to a person of ordinary skill and experience.” Id. We credit Dr. Xu’s testimony on this issue, especially in light of the lack of contrary evidence in the Patent Owner Response. In light of this evidence, we determine that Petitioner has shown by a preponderance of the evidence that Layman inherently discloses an analog-to-digital converter, as discussed regarding claim 2, and a switch to sample alternatively between voltage and current. Alternatively, we are persuaded by Petitioner’s contention that it would have been obvious to a person of ordinary skill in the art to utilize a switch to alternatively sample in this manner, to enable “the circuit to sample the correct signal at the proper time,” as explained by Dr. Xu. Ex. 1003 ¶ 16.” slip op. at 28

  Patent outcomesUS 5,764,034 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 5,764,034
• Smith & Nephew, Inc. / Arthrocare Corp. v. Arthrex, Inc.All claims unpatentable
  PTAB · Oct 16, 2017 · IPR2016-00918 · APJ Barry L Grossman · IPR · Final written decision

  Claims 10 and 11 are unpatentable as obvious over Gordon and West; claim 11 is also anticipated by Curtis, and claim 10 is obvious over Curtis, Overaker, and DiPoto.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “We deny the Motion as moot. We have not relied on or cited the evidence Patent Owner seeks to exclude. Moreover, the Board acts as both the gatekeeper of evidence and as the weigher of evidence. Rather than excluding evidence that is allegedly confusing, misleading, and/or irrelevant, we will simply not rely on it or give it little weight, as appropriate, in our analysis. Similar to a district court in a bench trial, the Board, sitting as a non-jury tribunal with administrative expertise, is well positioned to determine and assign appropriate weight to evidence presented, including giving it no weight. See, e.g., Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941) (“One who is capable of ruling accurately upon the admissibility of evidence is equally capable of sifting it accurately after it has been received . . . .”). Thus, in this inter partes review, the better course is to have a complete record of the evidence to facilitate public access as well as appellate review.” slip op. at 79

  • Skill levelOther

    “1. Level of Ordinary Skill The level of skill in the art is “a prism or lens” through which we view” slip op. at 14

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “and 11.” PO Resp. 69. But Patent Owner does not point us to evidence or explanation supporting its contention that the anchors embody claim 10 or 11 of the ’541 patent. We have not been directed to persuasive evidence of any nexus between the Patent Owner’s sales and the patented invention. Accordingly, the evidence of commercial success has no probative weight.” slip op. at 68

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “flexible approach” to the question of obviousness. KSR, 550 U.S. at 415. Whether a patent claiming the combination of prior art elements would have been obvious is determined by whether the improvement is more than the predictable use of prior art elements according to their established functions. Id. at 417. To reach this conclusion, however, it is not enough to show merely that the prior art includes separate references covering each separate limitation in a challenged claim. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness additionally requires that a person of ordinary skill at the time of the invention “would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention.” Id.” slip op. at 45

  Patent outcomesUS 8,821,541 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,821,541
• Travelers Indemnity Company v. Integrated Claims Systems, LLCAll claims unpatentable
  PTAB · Aug 29, 2017 · IPR2016-00660 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1–4, 14, 16, 19–21, 26, and 30–33 are unpatentable as obvious over Borghesi; claims 1 and 16 are also unpatentable over Beizer.

  RulingsFinal written decision

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

    “We determine that the claims do not indicate that the term “fields” must include label data and content data. Claim 1, for example, indicates data is received in fields, a filled identifiable field contains an image, fields of a GUI contain an image and data from filled identifiable fields, and data from filled identifiable fields is used to complete at least one field in a data bank. See Ex. 1001, 44:28–52. Patent Owner’s proposed interpretation of “fields” is narrower than the claims because the claims do not require expressly that the fields also contain label data or are delimited. The claims require receiving first and second data into identifiable fields, and do not indicate the fields are also “data comprised of ‘label data’ and ‘content data,’” as proposed by Patent Owner. Therefore, we determine that Patent Owner’s interpretation is narrower than and inconsistent with the claims. Turning next to the specification, Patent Owner relies on portions that describe data packages that include data fields with a digital attachment (Ex. 1001, 10:55–59), boxes in which alpha-numeric characters are entered to “fill a ‘field,’ a delimited alpha-numeric character string” (id. at 12:50–55, 22:30–35, 32:23–28), how fields are used and created from various forms to provide customized claim forms (id. at 12:55–13:23, 22:35–23:3, 32:28–63), how some form of signature can be provided in a field (id. at 33:11–20), and how PAC forms are processed (id. at 33:21–63, 34:38–40). See PO Resp. 13–15. Although the specification describes a field as being a delimited alpha-numeric character string when alpha-numeric characters are entered (Ex. 1001, 12:50–55, 22:30–35, 32:23–28), Patent Owner also cites to a portion of the specification that explains “some form of signature can be provided in the appropriate field,” such as by “a special electronic pad and pen . . . that when the patient signs on the pad his signature is affixed to the electronic PAC form” (id. at 33:16–20; see also id. at 13:44–48, 23:23–27). See PO Resp. 15 (citing Ex. 1001, 33:10–63). The specification does not indicate that such a signature would be an alpha-numeric character string or delimited. The specification also states that the “present invention encompasses the preparation, transmission, and processing of data packages including a plurality of data fields wherein at least one of the data fields is a digital attachment, e.g., a digital or graphic image.” Ex. 1001, 10:55–59. Nowhere does the specification describe a field as delimited when a digital attachment or digital or graphic image is entered. In view of the above, we also find that the specification of the ’129 patent does not provide a clear or precise definition of “fields.” Any special definitions for claim terms or phrases must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Instead of reasonable clarity, deliberateness, and precision, we find that the specification does not describe expressly that a field is “data comprised of ‘label data’ and ‘content data,’” as proposed by Patent Owner.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A. Level of Ordinary Skill In determining the level of skill in the art, we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, and the sophistication of the technology. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986). With support from the testimony of its declarant, Dr. Clark, Petitioner argues that a person of ordinary skill in the art at the time of the invention “would have a bachelor’s degree in Computer Science or Computer Engineering, or two years of work experience in the field of network data processing.” Pet 3 n.1 (citing Clark Decl. ¶ 20). No competing proposed definition of ordinary skill in the art or rebuttal to Petitioner’s proposal is offered by Patent Owner or its declarant, Mr. Gross. See PO Resp.; Gross Decl. After considering the disclosures of the ’129 patent and the cited prior art references, we adopt Petitioner’s proposal.” slip op. at 18

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “argue for a meaning of “fields.” See PO Resp. 12–16; Pet. Reply 3–10. Patent Owner, however, cites to paragraphs 12 and 13 of its Gross Declaration that, in turn, rely on portions of the specification discussed above and a definition from the Microsoft Computer Dictionary. See PO Resp. 13, 15 (citing Gross Decl. ¶¶ 12–13). For the reasons above, we determine that one of ordinary skill in the art would understand “field” as used in the cited portions of the specification and elsewhere to have a meaning broader than Patent Owner’s proposed interpretation. We also agree with Petitioner that Patent Owner did not provide an evidentiary record to support its reliance on the Microsoft Computer Dictionary because it did not file the dictionary excerpt as an exhibit. See 37 C.F.R. § 42.63(a) (“All evidence must be filed in the form of an exhibit.”). Even if it were filed as an exhibit, a dictionary definition of “delimit” would not persuade us Patent Owner’s proposed interpretation is correct, because, as explained above, Patent Owner does not convince us that a field must be delimited. Similarly, the testimony of Mr. Gross, on which Patent Owner relies, is also unpersuasive because its starting point is the premise that a field must be delimited. See Gross Decl. ¶ 12 (“A person of ordinary skill in the art would know, at the time the applications leading to the patents were filed, that in light of the specification the term ‘field’ means a delimited alpha-numeric character string.”). Neither Patent Owner nor Mr. Gross provides any persuasive evidence or explanation why delimiting inheres in the meaning of “field” as used in the ’129 patent.” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “identifiable fields, wherein at least one of the first set of filled identifiable fields contains at least one image.” Pet. 17 (arguing a “first set of data input into filled identifiable fields, for example, is created by the initial estimate and images sent from the body shop to the appraiser through a workfile”) (citing Ex. 1002, 17:56–60; Clark Decl. ¶ 41), 19–24 (citing Ex. 1002, 5:26– 30, 6:56–67, 7:24–28, 7:40–53, 8:65–9:21, 9:29–32, 10:43–45, 11:28–42, 13:42–43, 14:40–47, 17:52–18:1, Figs. 6, 7, 9–15, 19). We find that Borghesi teaches that “[a]ll the information related to a given claim is preferably contained in a single workfile such as an electronic datafile 24” (Ex. 1002, 5:26–30), that “[o]n each computer . . . a user views datafiles and other insurance claim processing information . . . and can enter . . . data” (id. at 7:24–28), that “[e]ach remote computer . . . provides an interface for a user to access the . . . workfile” that preferably is a “graphic user interface” (id. at 7:40–46), and that in the “graphic user interface . . . , an opened insurance claim datafile has a plurality of tabbed sections, each tabbed section representing a separate view of the datafile” (id. at 7:49–51). We also find that Borghesi teaches that in the “ADMIN” tab are several frames, one of which is the “parties” frame, shown in Figure 6, which includes “a number of text fields 110 for entering or viewing name, address and telephone information.” Id. at 9:18–20, 9:29–32, Fig. 6. We further find that Borghesi teaches that “[o]ther options a user has while viewing items in the in box are to . . . attach 184 the transaction . . . to a workfile in the in process box” and the “transaction may be a digitized image.” Id. at 11:28– 31, 11:35–37. Borghesi also teaches that a “digitized image of the damaged vehicle is appended to the workfile.” Id. at 6:60–61. Petitioner also persuades us that one of ordinary skill in the art would have at least found it obvious to display a GUI where at least one of the fields contains an image and at least one of the fields is filled with data, such as information relating to the image, at least because the user would be able to more efficiently review relevant materials in preparing a work order.” slip op. at 22

  Patent outcomesUS 7,694,129 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,694,129
• Mcwane, Inc. v. Tom W. WaughAll claims unpatentable
  PTAB · May 23, 2017 · IPR2016-00266 · APJ Jeffrey W Abraham · IPR · Final written decision

  Claims 10–13 are unpatentable under § 103 over Waugh and Ludwig; the contingent motion to amend claims 14–16 is denied as obvious.

  RulingsFinal written decision

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

    “After considering the parties’ arguments and evidence presented during the course of this trial, we determine that it is not necessary to construe this phrase for purposes of this Decision. See 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.”). As discussed in further detail 7 John F. Wallace, Engineering Aspects of Centrifugal Casting, 61 TRANSACTIONS OF THE AMERICAN FOUNDRYMEN’S SOCIETY, 701–18 (1953) (Ex. 1018). below, whether we treat claim 10 as a product by process claim, as Petitioner suggests, or consider it to be a positive limitation and adopt Patent Owner’s construction, the outcome is the same in view of the disclosure of centrifugal casting in the prior art references.” slip op. at 7

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

    “We agree with Petitioner that Patent Owner’s proposed construction imports limitations into the claims. The claim language itself does not limit a running ring to a flange having a surface that engages a running rail in an annealing oven or allows the pole on which it is formed to be placed in a cylindrical pipe for transport through an annealing oven. If Patent Owner intended for the claim to include these alleged “specific structural requirements” of the running ring, it could have done so by explicitly claiming the subject matter (as it proposes in its Motion to Amend). Not having done so, Patent Owner may not import the various limitations based on desired functions into the single term “running ring” to impart a meaning different from what is indicated by the plain language of the claims and the written description. Liebel-Flarsheim Co. v. Medrad, Inc., 358 F. 3d 898, 904 (Fed. Cir. 2004) (“[I]t is improper to read a limitation from the specification into the claims.”); E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003) (“The problem is to interpret claims ‘in view of the specification’ without unnecessarily importing limitations from the specification into the claims.”); CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (“Generally speaking, we indulge a ‘heavy presumption’ that a claim term carries its ordinary and customary meaning.”). Furthermore, the intrinsic evidence of record does not present a “clear indication . . . that the patentee intended the claims to be” limited to the embodiments identified by Patent Owner. Liebel-Flarsheim, 358 F.3d at 913. Patent Owner derives its proposed construction from structural features associated with a “post-cast annealing process,” but claim 10 does not mention annealing at all. Instead, it is directed to a centrifugally cast, hollow pole. And, as Petitioner points out, the portions of the Specification upon which Patent Owner relies relate to what the running ring does, not what it is. Reply 6. The Specification does contain a description of what the running ring is, stating that “[t]he flange is simply a larger based circle, or ring, cast at the pole’s large diameter end.” Ex. 1001, 4:7–9. Accordingly, we see no reason to modify our prior determination in light of the record developed at trial. We, therefore, maintain that the broadest reasonable interpretation of “running ring that extends outward from the second end” is a circular or ring-shaped flange extending outwardly from the second end of the pole member.” slip op. at 10

  • Skill levelSkill level board ownOther

    “skill in the art at the time of the alleged invention would have had “(i) an undergraduate degree in engineering or a technical field (e.g., mechanical engineering or materials science) and (ii) approximately three years of work experience in the design and manufacture of hollow structural members (e.g., ductile iron pipe), including specific experience with centrifugal casting using the de Lavaud process.” Ex. 1004 ¶ 13 (emphasis omitted). Patent Owner’s declarant, Mr. Podbel, testifies that a person of ordinary skill in the art would have “(1) a B.S. degree in mechanical engineering, materials science or equivalent training; and (2) approximately 3 years or more of direct experience in the design and manufacture of centrifugally cast ductile iron hollow members.” Ex. 2003 ¶ 16. We credit the testimony provided by the declarants for both parties and find that one of skill in the art would possess an undergraduate degree in mechanical engineering, materials science, or a related discipline, and at least three years of work experience in the design and manufacture of centrifugally cast, hollow structural members (e.g., ductile iron pipe). This level of ordinary skill is reflected not only by the information presented by the parties, but also by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 12

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedOther

    “We credit the testimony provided by the declarants for both parties and find that one of skill in the art would possess an undergraduate degree in mechanical engineering, materials science, or a related discipline, and at least three years of work experience in the design and manufacture of centrifugally cast, hollow structural members (e.g., ductile iron pipe). This level of ordinary skill is reflected not only by the information presented by the parties, but also by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 13

  Patent outcomesUS RE45,329 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
• Telebrands Corp. v. Tinnus Enterprises, LLCAll claims unpatentable
  PTAB · Dec 30, 2016 · PGR2015-00018 · APJ Richard E Rice · PGR · Final written decision

  Claims 1–6, 8, and 10–14 are unpatentable as indefinite under § 112(b); the Board did not reach the § 103(a) grounds.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “II. ANALYSIS A. Level of Skill in the Art Petitioner contends that a person of ordinary skill in the art (“POSA”) “would have been a person having a general knowledge about and experience with expandable containers, including without limitation balloons, and at least an associate’s degree in science or engineering.” Pet. 15–16 (citing Ex. 1015 ¶¶ 10–13; Ex. 1016 ¶¶ 10–13). Patent Owner responds that “the Board should limit Petitioner’s overly broad definition of a POSA from having an associate’s degree in any science or engineering to having an associate’s degree in mechanical engineering.” See, e.g., PO Resp. 12. According to Patent Owner, “Petitioner’s proposed definition should be limited because the inclusion of persons with an associate’s degree in any science or engineering fails to take into account the scope of the relevant art, which indisputably utilizes mechanical engineering principles.” Id. Upon consideration of the parties’ contentions, we determine that a POSA would have been a person having a general knowledge about and experience with expandable containers, including without limitation balloons, and at least an associate’s degree in mechanical engineering, or the equivalent.” slip op. at 7

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

    “1. “elastic fastener” In our Institution Decision, we preliminarily determined that the broadest reasonable interpretation consistent with the Specification of the claim term “elastic fastener” is an elastic element for attaching things together. Inst. Dec. 7–8. As neither party proposes any change to our interpretation, and our review of the evidence does not indicate that any change is necessary, we maintain that interpretation.” slip op. at 8

  • Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable

    “We determine that the test for indefiniteness that is applied in patent examination and reexamination matters, approved in Packard, should be applied in this post-grant review AIA proceeding, rather than the Nautilus requirement. The different approaches to indefiniteness before the PTO and the courts stem from the distinct roles that the PTO and the courts play in the patent system.12 In AIA proceedings, as in patent examination and reexamination matters, applying the broadest reasonable interpretation standard, coupled with an opportunity to amend the claims, is an approach that is fair to the patent holder and protects the public. See Cuozzo, 136 S. Ct. at 2145–46; Packard, 751 F.3d at 1312–14. This approach serves to ensure precision in patent claims, thereby helping the public to understand the limits of the claims and keeping the rights afforded by patents within their legitimate scope. See Cuozzo, 136 S. Ct. at 2144–45; Packard, 751 F.3d at 1313. Accordingly, among the reasons supporting application of the Packard-approved indefiniteness test in this AIA proceeding are those recognized by the Supreme Court in Cuozzo as supporting use of the broadest reasonable interpretation standard in inter partes review AIA proceedings. See Cuozzo, 136 S. Ct. at 2143–2146. Of these, the most important is the opportunity to amend the claims to correct any ambiguity. See id. at 2145 (“The patent holder may, at least once in the process, make a motion to do just what he would do in the examination process, namely, necessary) that a person of ordinary skill in the art would not consider the claim language unclear.” 12 See Packard, 751 F.3d at 1325 (Plager, J., concurring) (stating that “unlike courts which have a full prosecution record to consider, the prosecution record before the USPTO is in development and not fixed during examination”). amend or narrow the claim.”) (citation omitted); 35 U.S.C. § 326(d); 37 C.F.R. § 42.221. An applicant’s ability to clarify claim language through amendment was a significant reason why the Federal Circuit in Packard approved of the indefiniteness test recited in the MPEP (i.e., a “claim is indefinite when it contains words or phrases whose meaning is unclear”). Packard, 751 F.3d at 1313–14.” slip op. at 18

  • ExcludeMotion to exclude, deniedDenied

    “III. MOTIONS TO EXCUDE In its Motion to Exclude (Paper 57), Patent Owner seeks to exclude Petitioner’s Exhibits 1031 and 1032. Paper 57, 1–3. We deny Patent Owner’s motion, as moot, because we did not consider the referenced exhibits in reaching our decision in this case. In its Motion to Exclude (Paper 59), Petitioner seeks to exclude Patent Owner’s Exhibits 2016–2018, 2020 (¶ 84), 2024, 2025 (¶ 39), 2026 (¶ 39), 2027–2070, 2073, 2074, 2078, and 2085. Paper 59, 1–8. We deny Petitioner’s motion, as moot, because we did not consider the referenced exhibits and paragraphs in reaching our decision in this case.” slip op. at 34

  Patent outcomesUS 9,051,066 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Nautilus
  Patents in suitUS 9,051,066
• Deere & Company v. Richard GrammAll claims unpatentable
  PTAB · Sep 22, 2016 · IPR2015-00899 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–11 and 27–34 are unpatentable as obvious over the three combinations of prior art identified by the Board.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “a “header” or a “combine” per se; rather, it is a header height control apparatus—an “apparatus for detecting and controlling the height above the soil of an agricultural machine as it traverses a field.” Ex. 1001, 1:11–13. Nonetheless, there is no prohibition on a patentee drafting his or her claim in a manner that further limits the invention if additional structure is recited in the claim. As argued by Patent Owner, the recitation of “a non-cut crop header” and “a combine” in the preamble of claim 1, provide antecedent basis for at least two terms recited in the body of the claim—“the header” and “said combine.” The body of the claim reflects that the patentee chose to claim the header control apparatus in terms not limited to said apparatus standing alone, but rather the apparatus as attached (coupled) to the header of a combine. See, e.g., Ex. 1001, 7:33–34 (“a pre-loaded, generally linear flexible arm coupled to a forward portion of the header” (emphasis added)); 7:44–45 (“control means coupled to said header” (emphasis added)); 7:48– 51 (“wherein said flexible arm and angular deflection sensing means are attached to a head housing disposed on a forward portion of said combine” (emphases added)); 7:54–56 (“wherein said mounting bracket further couples said flexible arm to a forward end of said head housing” (emphasis added)). The prosecution history reflects that the patentee at first desired the recitation of “header” in the claim to be limited to “non-cut crop” headers, in an attempt to distinguish cut crop headers. Ex. 1002, 142 (Amendment filed June 19, 2000). The examiner, however, did not accept such argument (id. at 152–53 (Office Action mailed Aug. 24, 2000)), and the patentee did not reiterate or maintain the argument in amending the claims following the August 24, 2000, final rejection. Id. at 158–63 (Amendment filed Nov. 22, 2000). Nonetheless, the prosecution history is informative on this issue. In light of our discussion above regarding the claim language, specification, and the prosecution history, we do not construe the entire preamble as limiting. In particular, the preamble recites an apparatus for maintaining, and is presented clearly as reciting an intended use. That being said, we agree with the Patent Owner that the phrase “non-cut crop header” limits the terms “the header” and “said header” recited in the body of claim 1 such that “the header” and “said header” recited in the body of claim 1 are the same “non-cut crop header” recited in the preamble of the claim.11” slip op. at 24

  • Skill levelSkill level board ownOther

    “The parties’ statements of the level of ordinary skill are not significantly different, and the differences between their proposed levels of ordinary skill would not affect the outcome of this proceeding.5 In light of our review of the record, including the ’395 patent, the competing expert testimony, and the issues discussed during the oral argument, we agree with different aspects of the parties’ proposals. First, as Petitioner notes in its Reply, a mechanical engineer having familiarity with hydraulic systems and sensors, as Patent Owner proposes, does not have experience necessarily with agricultural equipment or combines. Reply 2, n.1. Thus, Patent Owner’s educational prong is overly broad. Second, Petitioner’s educational prong, on the other hand, is too narrow, requiring “design” of combines or 5 Indeed, neither party argues that any difference between the proposed levels of ordinary skill would affect the outcome of this proceeding. agricultural equipment. Third, we find that Petitioner’s experience prong also is too narrow, because it requires experience specifically in the “design” of agricultural equipment or combines. Accordingly, we find that the level of ordinary skill in the art is “a mechanical engineer having familiarity6 with agricultural equipment, such as combines, and hydraulic systems and sensors” or “a person having 10 or more years of experience7 working with combines.”8” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner

  Patent outcomesUS 6,202,395 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,202,395

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.