- One World Technologies, Inc., D/B/A Techtronic Industries Power Equipment v. Chervon (HK) LimitedNo claims unpatentablePTAB · Nov 3, 2021 · IPR2020-00888 · APJ Alyssa A Finamore · IPR · Final written decision
Claims 1–12, 15–17, and 19–21 were not shown unpatentable because the asserted §103 combinations lacked persuasive support for the claimed safety control devices.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable
“lawnmower and Nakano’s control device that disables the motor when the telescoping tubes are partially collapsed is premised on the safety issue of a user getting too close to the blade path when the user rotates Reichart’s handle between the in-use and storage positions. Even if we agree with Petitioner that this safety issue exists, it is the rotation, not the telescoping, of the handle that causes a user to get too close to the blade path. Reichart discloses the shortest length of the handle in the in-use position maintains minimum spacing “a” with respect to blade circular path 8. Ex. 1007, 4:31–5:5, 6:1–5. Although reducing minimum spacing “a” could bring a user and the operating elements on the handle too close to the blade path, such a reduction is effected by rotating telescopic tube 3 over casing 1, not sliding upper part 3b of telescopic tube 3 relative to lower part 3a. Moreover, as shown in Petitioner’s annotated version of Reichart’s Figure 4, telescoping the handle to a different length would not cause a user to stand in a different position other than the unsafe position shown with the red footprints to rotate the handle between the in-use and storage positions. Given that rotation, not telescoping, of Reichart’s handle brings a user and the operating elements too close to the blade path, we agree with Patent Owner that modifying Reichart’s lawnmower to include Nakano’s control device that activates and deactivates the motor based on the sliding position of the telescopic tubes would not have ensured that the operating elements and the user are a safe distance from the blade path. Petitioner’s rationale for adding Nakano’s control device to Reichart’s lawnmower lacks rational underpinning. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006))).” slip op. at 38
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“18 We do not understand Petitioner to be arguing that it would have been obvious to combine hold-to-run control component 30 and the electrical supply contactor associated therewith from Outils’s embodiment shown in Figure 1 with activation actuator 23 and cam 24 of Outils’s embodiment shown in Figure 10. A petitioner must explain why a POSITA would have combined the elements, including those disclosed in separate embodiments described in a single reference. See KSR Int’l Co., 550 U.S. at 418 (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”); In re Stepan Co., 868 F.3d 1342, 1345–46 n.1 (Fed. Cir. 2017) (“Whether a rejection is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful . . . .”). Petitioner does not provide any such explanation, reinforcing our understanding that Petitioner relies on the position that a POSITA would have understood the embodiment of Figure 10 to include, without modification, hold-to-run control component 30 controlling the electrical supply contactor from Figure 1. electrical supply contactor. Ex. 1014, 8:22–9:13.19 Similarly, Petitioner does not direct us to, nor do we discern, any depiction associated with Outils’s Figure 10 of a hold-to-run control component connected to an electrical supply contactor.” slip op. at 44
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerGranted
“v. Capella Photonics, Inc., our jurisdiction to consider a petition does not require a “correct” identification of all RPIs in a petition. IPR2015-00739, Paper 38, 6 (PTAB Mar. 4, 2016) (precedential); see also Blue Coat Sys., Inc. v. Finjan, Inc., IPR2016-01444, Paper 11, 10 (PTAB July 18, 2017) (“Evidence [of failure to identify all RPIs] is, at best, suggestive of an issue that is not jurisdictional.”). The Federal Circuit agrees that § 312(a)(2) is not jurisdictional. See Mayne Pharma Int’l Pty. Ltd. v. Merck Sharp & Dohme Corp., 927 F.3d 1232, 1240 (Fed. Cir. 2019) (“[I]f a petition fails to identify all real parties in interest under § 312(a)(2), the Director can, and does, allow the petitioner to add a real party in interest.” (quoting Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364, 1374 n.9 (Fed. Cir. 2018) (en banc))). Accordingly, a petitioner may amend its mandatory notices to add a RPI and still maintain its original filing date. See, e.g., Adello Biologics LLC v. Amgen Inc., PGR2019-00001, Paper 11, 5 (PTAB Feb. 14, 2019) (precedential) (authorizing pre-institution update to Mandatory Notices to add a RPI); Proppant Express Investments, LLC v. Oren Techs., LLC, IPR2017-01917, Paper 86, 7 (PTAB Feb. 13, 2019) (precedential) (“The Board may, under 35 U.S.C. § 312(a), accept updated mandatory notices as long as the petition would not have been time-barred under 35 U.S.C. § 315(b) if it had included the real party in interest.”). In determining whether to permit a petitioner to amend its mandatory notices to add a RPI while maintaining the original filing date, we consider “whether there have been (1) attempts to circumvent the § 315(b) bar or estoppel rules, (2) bad faith by the petitioner, (3) prejudice to the patent owner caused by the delay, or (4) gamesmanship by the petitioner.” Proppant, IPR2017-01917, Paper 86 at 6–7.” slip op. at 59
- ExcludeGranted
“The moving party has the burden of proof in showing it is entitled to the requested relief. 37 C.F.R. § 42.20(c). The standard for granting a motion to seal is “good cause.” 37 C.F.R. § 42.54. “The ‘good cause’ standard for granting a motion to seal reflects the strong public policy for making all information in an inter partes review open to the public.” Argentum Pharm. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 at 3 (PTAB Jan. 19, 2018) (informative).” slip op. at 64
Patent outcomesUS 10,070,588 not shown unpatentable§ 103 obviousnesscites KSRPatents in suitUS 10,070,588 - One World Technologies, Inc., D/B/A Techtronic Industries Power Equipment v. Chervon (HK) LimitedNo claims unpatentablePTAB · Nov 3, 2021 · IPR2020-00887 · APJ Alyssa A Finamore · IPR · Final written decision
Claims 1–20 were not shown unpatentable because the cited combinations failed to establish the claimed control devices and a reason to combine the teachings.
RulingsFinal written decision- Expert testimonyPatent owner expert creditedOther
“As set forth in our Trial Practice Guide12, there is no requirement of a perfect match between a declarant’s experience and the relevant field. CTPG 34 (citing SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010)). We generally permit testimony where the declarant’s scientific, technical, or other specialized knowledge will help the Board understand the evidence or determine a fact in issue. Id. (citing Fed. R. Evid. 702(a)). Mr. Smith has a Bachelor of Science degree in Mechanical Engineering and is a Certified Safety Professional in comprehensive practice. Ex. 2027 ¶¶ 3, 5. Mr. Smith is President of Alpine Engineering & Design, Inc., and has over thirty years of experience with mechanical design, including the design of lawnmower controls. Id. ¶ 6. Given his education in mechanical engineering and his experience with mechanical design, we find Mr. Smith’s testimony may be helpful in deciding factual issues in this proceeding. Moreover, when assigning weight to a declarant’s testimony, we consider the underlying facts or data upon which the testimony is based. CTPG 40–41. In our analysis of the asserted grounds of unpatentability, we weigh Mr. Smith’s testimony accordingly.” slip op. at 26
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends a POSITA “would have had at least a bachelor’s degree in mechanical engineering, electrical engineering, or similar technical field, with at least three years of relevant product design experience.” Pet. 12–13. Petitioner further contends “[a]n increase in experience could compensate for less education.” Id. at 13 (citing Ex. 1003 ¶ 46). Patent Owner adopts Petitioner’s proposed level of ordinary skill in the art exclusively for this proceeding. PO Resp. 5. We find Petitioner’s proposal is consistent with the level of ordinary skill reflected in the asserted references, which involve various mechanical and electrical aspects of gardening tools such as lawnmowers. For instance, Reichart discloses a lawnmower having a handle that is adjustable to different heights to accommodate users of varying heights (Ex. 1007, code (57)), and Outils teaches a lawnmower having a safety device that prevents access to the rotating cutting blade (Ex. 1014, code (57)). Accordingly, we adopt Petitioner’s proffered level of ordinary skill in the art.” slip op. at 27
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes constructions for three claim terms—“power supply circuit” and the related terms “locks” and “unlocks.” Pet. 14–17; Reply 5. Patent Owner “believes that no construction is required for [‘power supply circuit’] because the construction of this term is not relevant to the issues raised herein.” PO Resp. 11; see also Sur-reply 2 (arguing the construction of “power supply circuit” is not relevant to the issues raised in this proceeding). Moreover, for purposes of this proceeding only, Patent Owner does not dispute Petitioner’s proposed constructions for “locks” and “unlocks.” PO Resp. 11. The parties do not dispute the meanings of the claims terms “locks” and “unlocks,” and we agree with Patent Owner that an express construction of the claim term “power supply circuit” is unnecessary to resolve the dispute. For the reasons set forth in our analysis of the asserted grounds of unpatentability, we determine that no claim term requires an express construction for us to ascertain whether Petitioner has shown the challenged claims to be unpatentable.” slip op. at 28
- BurdenFwd all claims patentableNot shown unpatentable
“demonstrated Outils teaches or suggests a second control device that unlocks and locks the first control device, as recited in limitation [1f]. Also, as we explain in section III.D.1.b, Petitioner has not persuaded us that a POSITA would have combined the teachings of Reichart and Nakano to result in the claimed subject matter, including limitation [1g]. Petitioner has not proven, by a preponderance of the evidence, that the subject matter of independent claim 1 would have been obvious over Reichart, Nakano, Outils, and 16 CFR 1205. 2. Independent Claim 11 Like independent claim 1, independent claim 11 recites, in pertinent” slip op. at 51
Patent outcomesUS 9,986,686 not shown unpatentableClaim construction§ 103 obviousnessPatents in suitUS 9,986,686 - One World Technologies, Inc., D/B/A/ Techtronic Industries Power Equipment v. Chervon (HK) LimitedNo claims unpatentablePTAB · Nov 3, 2021 · IPR2020-00884 · APJ James J Mayberry · IPR · Final written decision
Claims 1–13 were not shown unpatentable under four § 103 grounds because the petitioner failed to establish the claimed control system in Outils.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“evidence, and the parties’ arguments and counterarguments, we find that Petitioner fails to demonstrate, by a preponderance of the evidence, that Outils teaches or suggests the subject matter of the control system limitation, including both a first control device and a second control device. We find Petitioner fails to support its position that a person having ordinary skill in the art would have understood that the embodiment depicted in Outils’s Figure 10 includes a hold-to-run control connected to an electrical supply contactor with persuasive evidence. At the outset, we agree with Patent Owner that Petitioner does not argue that it would have been obvious to combine Outils’s disclosure of hold-to-run control component 30 controlling an electrical supply contactor from the embodiment of Figure 1 with the embodiment of Figure 10. That is, we understand that Petitioner contends that a person having ordinary skill in the art would have understood that the embodiment of Outils’s Figure 10 already had a specific type of control device—the hold-to-run control component 30 controlling an electrical supply contactor from the embodiment of Figure 1. See Pet. 36 (indicating that the first control device is Outils’s electrical supply contactor); Reply 7 (“But while the Bowden cable of Figure 1 is replaced in Figure 10, [a person having ordinary skill in the art] would understand Figure 10 must still include a user’s on/off component even though none is illustrated.”); see also Reply 9 (“Thus, [a person having ordinary skill in the art] would have understood Outils’ Figure 10 to include hold-to-run lever 30 . . . and its electric supply contactor from Figure 1”).15” slip op. at 31
- PTAB / AIA Trials › Real party in interest / privityJoinder, grantedGranted
“allow the petitioner to add a real party in interest.” (quoting Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364, 1374 n.9 (Fed. Cir. 2018) (en banc)). As such, a petitioner may amend its mandatory notices to add a real party-ininterest and still maintain its original filing date. See, e.g., Adello Biologics LLC v. Amgen Inc., PGR2019-00001, Paper 11, 5 (PTAB Feb. 14, 2019) (precedential) (authorizing pre-institution update to Mandatory Notices to add a RPI); Proppant Express Investments, LLC v. Oren Techs., LLC, IPR2017-01917, Paper 86, 7 (PTAB Feb. 13, 2019) (precedential) (“The Board may, under 35 U.S.C. § 312(a), accept updated mandatory notices as long as the petition would not have been time-barred under 35 U.S.C. § 315(b) if it had included the real party in interest.”) (“Proppant”). In determining whether to permit a petitioner to amend its mandatory notices to add a real party-in-interest while maintaining the original filing date, we consider “whether there have been (1) attempts to circumvent the § 315(b) bar or estoppel rules, (2) bad faith by the petitioner, (3) prejudice to the patent owner caused by the delay, or (4) gamesmanship by the petitioner.” Proppant, Paper 86, 6–7.” slip op. at 44
- Strike new argumentNot reached
“B. Patent Owner’s Motion to Strike Patent Owner moves to strike portions of Petitioner’s Reply as “includ[ing] numerous new improper arguments, rationales, and theories.” Paper 43, 1.21 Petitioner opposes. Paper 47. Because, even when considering Petitioner’s Reply as a whole, we conclude that Petitioner fails to demonstrate, by a preponderance of the evidence, that any of the Challenged Claims are unpatentable, we dismiss Patent Owner’s motion as moot.” slip op. at 48
- ExcludeMotion to exclude, grantedGranted
“The moving party has the burden of proof in showing it is entitled to the requested relief. 37 C.F.R. § 42.20(c). The standard for granting a motion to seal is “good cause.” 37 C.F.R. § 42.54. “The ‘good cause’ standard for granting a motion to seal reflects the strong public policy for making all information in an inter partes review open to the public.” Argentum Pharm. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 at 3 (PTAB Jan. 19, 2018) (informative).” slip op. at 49
Patent outcomesUS 9,596,806 not shown unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,596,806 - One World Technologies, Inc., D/B/A/ Techtronic Industries Power Equipment v. Chervon (HK) LimitedNo claims unpatentablePTAB · Nov 3, 2021 · IPR2020-00886 · APJ Barry L Grossman · IPR · Final written decision
Claims 1–20 were not shown unpatentable: the Outils, Roelle, and Matsunaga combination did not establish the claimed control system, and the second ground did not cure that deficiency.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“experience could compensate for less education.” Pet. 12 (citing Ex. 1003 ¶ 44). Mr. Reed’s opinion testimony merely repeats Petitioner’s conclusion without any analysis and without disclosing the underlying facts or data on which his opinion is based. Accordingly, his testimony on this issue is entitled to no probative weight. 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.”). In our Decision to Institute, we adopted Petitioner’s proposed level of skill. Dec. Inst. 36. Patent Owner states that “[f]or purposes of these proceedings only, Patent Owner adopts Petitioner’s proposed level of ordinary skill in the art.” PO Resp. 4. Neither party provides any evidence of the factors listed above that normally inform our determination of the level of ordinary skill. For the purposes of this Decision, based on the prior art, we maintain” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1. “Power Supply Circuit” Patent Owner believes that no construction is required for the term “power supply circuit” because “the construction of this term is not relevant to the issues raised herein.” PO Resp. 10. Patent Owner also asserts that the “District Court in the parties’ related district court litigation rejected Petitioner’s proposed construction.” Id. (citing Ex. 2025, 8). Petitioner disputes Patent Owner’s characterization of the District Court’s claim construction. Reply 5. Moreover, Petitioner asserts that the District Court’s construction of “power supply circuit” “would not impact the Petition’s demonstration of the challenged claims’ unpatentability.” Id. We maintain that the determination in our Decision to Institute that we need not construe this term to resolve the dispute before us.” slip op. at 25
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“determine that Patent Owner’s proposed construction of the “accommodating position” phrase, which is a “horizontal position over the main body” (PO Resp. 13) is not supported by the evidence. We agree with Petitioner’s proposed construction that the “accommodating position” phrase is a position relative to the main body for when the gardening tool or mower is not being used (Reply, 6), with a minor clarification. As Patent Owner argues, Petitioner’s proposed construction “is incorrect because it encompasses any handle position when the mower is turned off, and thus reads out the claimed “accommodating position.” Sur-reply 3. Our proposed construction modifies Petitioner’s construction to recognize Patent Owner’s argument. For purposes of this Decision, the phrase “accommodating position relative to the main body” in claims 1 and 11 is given its ordinary and customary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. This meaning is any position of the handle, other than the “secure position,” that prevents the motor from being started by the operation assembly and stops the motor if it is running. This is the construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention.” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“14 A petitioner must explain why a person having ordinary skill in the art would have combined the elements, including those disclosed in separate embodiments described in a single reference. See KSR, 550 U.S. at 418 (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”); In re Stepan Co., 868 F.3d 1342, 1345–46 n.1 (Fed. Cir. 2017) (“Whether a rejection is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.”). Petitioner does not provide any such explanation, reinforcing our understanding that Petitioner relies on the position that a person having ordinary skill in the art would have understood the embodiment of Figure 10 to include, without modification, hold-to-run control component 30 controlling an electrical supply contactor from Figure 1. light of Outils’s disclosure of control components other than an electrical supply contactor connected to hold-to-run control component 30 in the embodiment of Figure 1; (3) Petitioner’s reliance on 16 C.F.R. Part 1205 to support the understanding of a person having ordinary skill in the art; (4) Petitioner’s reliance on Outils’s disclosure at page 2, lines 24–27, to support the understanding of a person having ordinary skill in the art; and (5) Petitioner’s contention that it would have been obvious to add an operation assembly to the embodiment of Outils’s Figure 10. First, it is undisputed that the text describing Figure 10 does not mention a hold-to-run control component connected to an electrical supply contactor. See Ex. 1014, 8:22–9:13.15 Similarly, Petitioner does not direct us to, nor do we discern, any depiction associated with Outils’s Figure 10 of a hold-to-run control component connected to an electrical supply contactor. Second, in describing the embodiment of Figure 1, Outils discloses that hold-to-run control component 30 can function in one of three different ways. Control 30, through remote control cable 29, can act on (1) a motor brake, (2) a brake coupling, or (3) an electrical supply contactor. See Ex. 1014, 4:5–8; see also Pet. 31 (acknowledging that Outils’s hold-to-run control component 30 “acts on a motor brake, a brake coupling or an electrical supply contactor” (emphasis added)). Neither Petitioner nor Mr. Reed persuasively explains why a person having ordinary skill in the art would have understood the embodiment of Figure 10 to have hold-to-run control component 30 connected to an electrical supply contactor, rather 15 Outils references Figures 9 and 10 at page 7, line 15. This reference is a typographical error. The reference should be to Figures 8 and 9, which include means 4 and actuator 20. See Ex. 1014, 7:15–8:20, Figs. 8, 9; Dec. Inst. 30; Reply 9 n.5. than a motor brake or brake coupling. That is, Petitioner does not provide persuasive evidence supporting the contention that, out of the three possible control devices disclosed as connected to hold-to-run control component 30—a motor brake, a brake coupling, or an electrical supply contactor—a person having ordinary skill in the art would have understood from Outils’s disclosure that the embodiment of Figure 10 specifically includes an electrical supply contactor. There is no persuasive evidence that the embodiment of Figure 10 in Outils, which includes actuator 23 and cam 24, also includes hold-to-run control component 30 and only the electrical contactor to the exclusion of the other two control components. There also is no persuasive evidence, in this embodiment, actuator 23 and cam 24 enable, i.e. unlocks, or disables, i.e., locks, hold-to-run control component 30 and the associated electrical supply contactor from starting the motor, as required by the control system limitation.” slip op. at 48
Patent outcomesUS 9,826,686 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,826,686 - One World Technologies, Inc., D/B/A/ Techtronic Industries Power Equipment v. Chervon (HK) LimitedNo claims unpatentablePTAB · Nov 3, 2021 · IPR2020-00884 · APJ James J Mayberry · IPR · Final written decision
Claims 1–13 were not shown unpatentable because the evidence did not establish that Outils disclosed or suggested the claimed first and second control devices.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityGranted
“In determining whether to permit a petitioner to amend its mandatory notices to add a real party-in-interest while maintaining the original filing date, we consider “whether there have been (1) attempts to circumvent the § 315(b) bar or estoppel rules, (2) bad faith by the petitioner, (3) prejudice to the patent owner caused by the delay, or (4) gamesmanship by the petitioner.” Proppant, Paper 86, 6–7.” slip op. at 44
- Strike new argumentNot reached
“Patent Owner moves to strike portions of Petitioner’s Reply as “includ[ing] numerous new improper arguments, rationales, and theories.” Paper 43, 1.21 Petitioner opposes. Paper 47. Because, even when considering Petitioner’s Reply as a whole, we conclude that Petitioner fails to demonstrate, by a preponderance of the evidence, that any of the Challenged Claims are unpatentable, we dismiss Patent Owner’s motion as moot.” slip op. at 48
- ExcludeMotion to exclude, grantedGranted
“The moving party has the burden of proof in showing it is entitled to the requested relief. 37 C.F.R. § 42.20(c). The standard for granting a motion to seal is “good cause.” 37 C.F.R. § 42.54. “The ‘good cause’ standard for granting a motion to seal reflects the strong public policy for making all information in an inter partes review open to the public.” Argentum Pharm. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 at 3 (PTAB Jan. 19, 2018) (informative).” slip op. at 49
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Not reached
“Patent Owner argues that “[t]his proceeding should be dismissed because the assigned Administrative Patent Judges are principal officers of the United States and yet were not appointed by the President and confirmed by the Senate” in violation of the Appointments Clause. PO Resp. 52–53. We decline to address Patent Owner’s constitutional challenge except to note that the constitutionality of the appointments of the Administrative Patent Judges was addressed by the U.S. Supreme Court in United States v. Arthrex, Inc., 141 S. Ct. 1970, 1986–87, 1997 (2021).” slip op. at 50
Patent outcomesUS 9,596,806 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,596,806 - Kranos Corporation v. Riddell, Inc.No claims unpatentablePTAB · Jul 11, 2019 · IPR2016-01646 · APJ James J Mayberry · IPR · Remand
On remand, the Board found claims 1–7, 11, 13, 25–28, 30, 32–37 not shown unpatentable on the added grounds; it also denied Riddell’s motion to exclude as moot.
RulingsRemand decision- RemandOther
“motion to terminate the appeal in IPR2016-01646 and remand the proceeding, in light of SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018), and the Director’s Guidance on the Impact of SAS on AIA Trial Proceedings, for us to address claims and grounds that we had not instituted.3 In response, we modified our Decision on Institution to institute trial for all challenged claims and all grounds. Paper 32, 3 (the “November 9, 2018, Order”). We ordered briefing on those claims and grounds added to the trial in the November 9, 2018, Order. See Paper 32, 3–7.” slip op. at 3
- PTAB / AIA Trials › Motions to amend / substitute claimsAdverse judgmentGranted
“certain claims and grounds added to the trial in our November 9, 2018, Order. Paper 33. In the motion, Kranos “requests adverse judgment as to . . . [c]laims 3, 4, 7, 13, and 36.” Id. at 2. The motion continues that claims 6 and 26 remain in this proceeding for the grounds of “[o]bviousness over each of Sears or Rappleyea in combination with Ispas.” Id. As to claims 3, 4, 7, 13, and 36, Kranos’s motion is granted. Accordingly, we will enter the following judgment as to those claims: (1) claim 13 is not proven unpatentable as anticipated by Sears; (2) claim 13 is not proven unpatentable as anticipated by Rappleyea; (3) claim 13 is not proven unpatentable as anticipated by Zeller; (4) claim 36 is not proven unpatentable as obvious over Sears, Rappleyea, or Monica and Halstead; and (5) claims 3, 4, and 7 are not proven unpatentable over Sears or Rappleyea and Ispas.” slip op. at 9
- Skill levelSkill level board ownDecided for petitioner
“record before us, and ultimately found that a person having ordinary skill in the art to which the ’118 patent pertains would have at least a Bachelor’s degree in engineering or physics and at least one year of experience in designing protective equipment, protective helmets, or plastic parts including the design of protective or structural plastic elements. Final Wrtn. Dec. 9–10. We also found that additional experience (at least three years) may be substituted for a formal engineering degree. Id. at 10. We found that the prior art of record reflects this level of ordinary skill in the art. Id. at 10–11. We noted that our patentability analysis presented below would reach the same findings and determinations under Kranos’s or Mr. Shewchenko’s definition of the level of ordinary skill in the art. Id. at 11. In the supplemental briefing, neither party argued for a different definition of the level of ordinary skill than the definition adopted in our Final Written Decision, nor do we discern any reason, based on the supplemental record, to change this definition.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The term “aligned along” does not appear in any claim addressed in this Supplemental Final Written Decision. See, e.g., Final Wrtn. Dec. 11 (indicating that the term “aligned along” appears in independent claim 34). In the Final Written Decision, we determined that we did not need to expressly construe the term “integrally formed” to resolve the parties’ dispute. See id. at 16. As will be apparent from our analysis below, we need not address this term further here.” slip op. at 13
Patent outcomesUS 8,528,118 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,528,118 - TRW Automotive U.S. LLC v. Magna Electronics Inc.No claims unpatentablePTAB · Jan 15, 2016 · IPR2014-01348 · APJ Michael J Fitzpatrick · IPR · Final written decision
The Board held claims 40, 41, 43, 44, 46–59, 61–64, 66–74, 86, 87, 89, and 90 not unpatentable because it excluded Goldbeck for lack of authentication.
RulingsFinal written decision- ExcludeMotion to exclude, grantedGranted
“Rule 901(a) states: “To satisfy the requirement of authenticating or identifying an item of evidence, the proponent must produce evidence sufficient to support a finding that the item is what the proponent claims it is.” Fed. R. Evid. 901(a). Thus, we first look to what TRW claimed Exhibit 1105 to be. In that regard, the only identifying information provided by TRW is a footnote in its Petition. See Pet. 2 n.4. The footnote offers a purported bibliographic reference for Exhibit 1105 as follows: “Goldbeck et al., ‘Lane 5 detection and tracking by video sensors,’ Intelligent Transportation Systems, 1999. Proc., 5-8 Oct. 1999, pp.74-79.; prior art under 35 U.S.C. § 102(b).” Id. Thus, TRW claimed that Exhibit 1105 was published during October 5–8 of 1999 in something called Intelligent Transportation Systems. Id. TRW did not cite or otherwise provide any evidence for this claim. Id.8” slip op. at 5
- BurdenNot shown unpatentable
“In its Petition, TRW offered Exhibit 1105 as an article published October 5– 8, 1999, in Intelligent Transportation Systems. Pet. 2 n.4. Magna timely objected for, among other things, lack of authentication. TRW did not serve any supplemental evidence that Exhibit 1105 is what TRW claims it is. And, in opposing the Motion to Exclude, TRW has not directed us to evidence probative of Exhibit 1105 being an article published October 5–8, 1999, in Intelligent Transportation Systems or persuaded us that Exhibit 1105 is self-authenticating for that which TRW generally claims it to be: “an IEEE publication from an IEEE periodical.” Opp. 4. Magna’s Motion to Exclude Exhibit 1105 for lack of authentication is granted. III. CONCLUSION Petitioner’s ground of unpatentability relies on Exhibit 1105 (Goldbeck). Because we exclude Exhibit 1105 from evidence, Petitioner’s ground of unpatentability necessarily fails.” slip op. at 12
Patent outcomesUS 8,508,593 not shown unpatentableNonePatents in suitUS 8,508,593 - TRW Automotive U.S. LLC v. Magna Electronics Inc.No claims unpatentablePTAB · Jan 6, 2016 · IPR2014-01347 · APJ Michael J Fitzpatrick · IPR · Final written decision
The Board held claims 1–3, 6–12, 16, 18–31, 33–39, 76–80, and 82–85 not unpatentable because it excluded Goldbeck for lack of authentication, defeating both obviousness grounds.
RulingsFinal written decision- ExcludeMotion to exclude, grantedGranted
“Rule 901(a) states: “To satisfy the requirement of authenticating or identifying an item of evidence, the proponent must produce evidence sufficient to support a finding that the item is what the proponent claims it is.” Fed. R. Evid. 901(a). Thus, we first look to what TRW claimed Exhibit 1005 to be.” slip op. at 6
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached
“Magna challenged the sufficiency of TRW’s evidence that Exhibit 1005 constitutes a prior art printed publication. See PO Resp. 48–50; see also 35 U.S.C. § 311(b) (“A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent . . . only on the basis of prior art consisting of patents or printed publications.”). TRW responded to Magna’s sufficiency of the evidence arguments by” slip op. at 4
Patent outcomesUS 8,508,593 not shown unpatentable§ 102 anticipationPatents in suitUS 8,508,593
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.