- Pungkuk Edm Wire Manufacturing Company v. Seong, Ki ChulRehearing deniedPTAB · Oct 31, 2016 · IPR2016-00762 · APJ Christopher M Kaiser · IPR · Rehearing
Denied Petitioner’s rehearing request; claims 1–5 remain instituted only on the Mukherjee anticipation ground, with institution denied on the Briffod and Takano anticipation grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We will grant a request for rehearing of a petition decision if the requesting party demonstrates “an abuse of discretion” in the decision. 37 C.F.R. § 42.71(c). However, we will grant a request for rehearing only if it also “specifically identif[ies] . . . the place where each matter [that we misapprehended or overlooked] was previously addressed.” Id. § 42.71(d). After considering the Request for Rehearing, the Decision, and the evidence currently of record, we determine that Petitioner has not demonstrated an abuse of discretion. Accordingly, we deny the Request for Rehearing.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“sufficiently that Briffod discloses the “crack structure” of the recited claims on the surface of its film 2. Dec. 14–15. This was based on the failure of Petitioner and Briffod to explain whether the voids that Petitioner contends constitute cracks are present on “the surface” of the layer in question. Id. In its Request for Rehearing, Petitioner now argues that conclusion was an abuse of discretion. Request 6–9. Petitioner argues that Briffod discloses voids contained within film 2 and that these voids “qualify as cracks.” Id. at 6. As stated in our Decision, we agree that Briffod discloses voids within film 2, and, for the purposes of deciding whether to institute inter partes review, we accepted Petitioner’s contention that the voids in question constitute “cracks.” Dec. 13–14. The challenged claims, however, require that the “alloy layer has a crack structure on its surface,” and the Petition failed to explain why the presence of cracks within a layer demonstrates the presence of cracks on the surface of that layer.” slip op. at 5
- BurdenDecided for patent owner
“Finally, Petitioner argues that the roughness of the surface of film 2 and the roughness of overlying thin film 3 demonstrate the presence of voids on the surface of film 2. Request 8–9. Once again, Petitioner fails to explain adequately where this argument was made previously. Petitioner intermittently points to portions of the Petition where it contends that this argument was made previously, but Petitioner also intersperses arguments that do not cite to the Petition. Id. (citing Pet. 13–14, 23). To the extent that the citations are missing, we cannot consider this argument. 37 C.F.R. § 42.71(d). Even if we could consider this argument, we would not be persuaded that it showed an abuse of discretion in our conclusion that Petitioner failed to show sufficiently that Briffod discloses the presence of a crack structure on the surface of thin film 2. Briffod shows voids within thin film 2, and Briffod shows that thin film 2 has a rough surface. Ex. 1003, Fig. 1b. Briffod also states that the voids caused by the Kirkendall effect “may be the reason for the observed porosity of [thin film 3].” Id. at 4:21– 29. It is not clear that this establishes a causal relationship of any kind between the presence of voids and the rough surface, because it only posits a possible connection. Even if the voids do cause the surface to be rough, they could do so through several conceivable mechanisms, only one of which is the accumulation of voids at the surface. Petitioner did not explain in the Petition why we should assume any causal relationship, much less the single type of causal relationship that would satisfy the language of the challenged claims.” slip op. at 6
§ 102 anticipationPatents in suitUS 6,482,535 - Pungkuk Edm Wire Manufacturing Company v. Seong, Ki ChulRehearing deniedPTAB · Oct 31, 2016 · IPR2016-00764 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied the petitioner’s rehearing request, finding no abuse of discretion in denying institution on the Briffod and Takano anticipation grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS A request for rehearing must identify specifically all matters the party believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). Additionally, Petitioner, as the party challenging the Decision, has the burden of showing the decision should be modified. Id. When rehearing a decision on a petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined “if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re Gartside, 200 F.3d 1305, 1315–16 (Fed. Cir. 2000)).” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“evidence presented, that Petitioner established sufficiently that Briffod discloses voids or cracks that are formed in the alloy layer. Dec. 19–20. Specifically, we stated that Briffod describes the surface of thin film 3 as shown in Figure 1b (the claimed “coating layer,” according to Petitioner) as “very rough,” with “many holes of 1 to 2µ which confirms the sponge-like structure suggested by the appearance of the surface.” [Ex. 1003, 4:8–15.] Briffod does not, however, describe the characteristics of film 2, which Petitioner contends is the “alloy layer” required by the claims. See Pet. 29 (quoting Ex. 1003, 2:55–56); id. at 30 (same). Petitioner does not provide any other evidence that shows sufficiently that Briffod discloses voids or cracks that are formed in the alloy layer. Id. Therefore, we considered Petitioner’s arguments and evidence that cracks or voids are formed in Briffod film 2, and deemed it insufficiently persuasive. Moreover, with respect to Petitioner’s argument that Briffod Figure 1b “illustrates the Kirkendall voids as small circles in the film 2,” we note that Briffod describes Figure 1b as illustrating the Briffod invention “in a schematic manner” (Ex. 1003, 2:51–55), and does not explain what, if anything, the “small circles” drawn in film 2 signify. It is not an abuse of discretion to have made an analysis or conclusion with which a party disagrees. As a result, we did not abuse our discretion in denying institution of inter partes review of claims 2, 5, 7, 8, and 10 on the asserted ground of unpatentability based on Briffod.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“to show anticipation because Comparative Example 2, alone, shows all of the features of claims 1 and 6 of the ’036 patent.” Req. Reh’g 13. Petitioner does not point us to where this argument was made in the Petition; instead, Petitioner directs us to page 19 of the Petition, which is an overview of Takano. Id. at 12. In contrast, in the claim charts, which “show features of Takano that correspond to the claims of the ‘036 patent,” Petitioner identifies Example 1 as disclosing some limitations of the claims, and Comparative Example 2 as disclosing others. See, e.g., Pet. 33–34 (claim chart for claim 1). Per 37 C.F.R. § 42.71(d), Petitioner must point out where the matter was previously addressed in its Petition. We could not have overlooked argument or evidence that was not presented in the Petition. A request for rehearing is not an opportunity to supplement a petition.” slip op. at 5
§ 102 anticipationPatents in suitUS 6,492,036 - Pungkuk Edm Wire Manufacturing Company v. Seong, Ki ChulRehearing deniedPTAB · Oct 31, 2016 · IPR2016-00763 · APJ Kristina M Kalan · IPR · Rehearing
The Board denied the petitioner’s rehearing request, leaving in place the refusal to institute on Takano anticipation of claims 1–4, 6, and 14–18.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We will grant a request for rehearing of a petition decision if the requesting party demonstrates “an abuse of discretion” in the decision. 37 C.F.R. § 42.71(c). However, we will grant a request for rehearing only if it also “specifically identif[ies] . . . the place where each matter [that we misapprehended or overlooked] was previously addressed.” Id. § 42.71(d). After considering the Request for Rehearing, the Decision, and the evidence currently of record, we determine that Petitioner has not demonstrated an abuse of discretion. Accordingly, we deny the Request for Rehearing.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)
“arguments in support of the asserted anticipation of claims 1–4, 6, and 14–18 by Takano. Req. 1. In refusing to institute on this ground, we concluded that Petitioner had not shown sufficiently that Takano anticipates claims 1– 4, 6, and 14–18 because Petitioner’s argument required combining disclosures from multiple embodiments disclosed in Takano. Dec. 18. Petitioner now presents two arguments that this determination was an abuse of discretion. Req. 5–8.” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“arguments in support of the asserted anticipation of claims 1–4, 6, and 14–18 by Takano. Req. 1. In refusing to institute on this ground, we concluded that Petitioner had not shown sufficiently that Takano anticipates claims 1– 4, 6, and 14–18 because Petitioner’s argument required combining disclosures from multiple embodiments disclosed in Takano. Dec. 18. Petitioner now presents two arguments that this determination was an abuse of discretion. Req. 5–8.” slip op. at 3
§ 102 anticipationPatents in suitUS 6,306,523 - Jackel International Limited / Mayborn USA, Inc. v. Admar International, Inc.No claims unpatentablePTAB · Sep 21, 2016 · IPR2015-00979 · APJ Hyun J Jung · IPR · Final written decision
Claims 1–5, 7–12, and 14 were not shown unpatentable under § 103 because the cited references did not teach or suggest the claimed spout.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“In summary, we find that the extrinsic evidence cited by Patent Owner indicates that the ordinary and customary meaning of “spout,” as would have been understood by one of ordinary skill in the art in the context of the entire disclosure of the ’841 patent, is “a tube or lip projecting from a container, through which liquid can be poured and through which a user drinks” (see Ex. 1001 at 2:6–11, 5:11–13, 5:60–67, 6:2–7, 6:17–23, 10:5–8, Figs. 1, 2, 5, 11–14, claims 1, 8; Ex. 2011, 1688) and does not include a nipple (see Ex. 2022 at 5–8, Figs. 1–3; Valderrama Decl. ¶¶ 91–94). Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2011) (“Even under the broadest reasonable interpretation, the Board’s construction ‘cannot be divorced from the specification and the record evidence,’ and ‘must be consistent with the one that those skilled in the art would reach.’”). Accordingly, based on the complete record before us, we interpret “spout” to mean “a tube or lip projecting from a container, through which liquid can be poured and through which a user drinks” and does not encompass a nipple.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“For the reasons discussed above in Section II.A, we determine that the broadest reasonable interpretation in view of the ’841 patent’s specification of “spout” to be “a tube or lip projecting from a container, through which liquid can be poured and through which a user drinks” and does not encompass a nipple. We agree with Patent Owner that liquid cannot be poured through a nipple. PO Resp. 10 (“Spouts are intended for a stream of liquid, while nipples are intended for liquid to seep.”); see also Tr. 24:2– 26:3, 29:12–16 (arguing liquids are poured through a spout); Ex. 1022 at 140:1–12 (Mr. Valderrama testifying that Raymond and Mutti do not have a spout); Ex. 2026, 34:20–35:15, 50:23–51:7 (Dr. Brown testifying that Raymond does not refer to a spout). We find that liquid cannot be poured through Petitioners’ asserted spout (Pet. 18 (citing Ex. 1002 ¶ 32; Ex. 1003 at 5:17–20, Fig. 2)). The full record persuades us that Petitioners’ asserted spout in Raymond and similar structure in Mutti do not teach or suggest the spout of claim 1. See PO Resp. at 28–30 (citing Valderrama Decl. ¶¶ 135– 138; Ex. 1005, Fig. 2–4; Ex. 2026, 27:24–25:16, 86:10–25). Therefore, we find that Raymond fails to teach or suggest the spout of claim 1, as argued by Petitioners. Petitioners rely on Mutti to teach slits that would be understood to be self-sealing. Pet. 19–20 (citing Ex. 1002 ¶ 69; Ex. 1004, Figs. 10–11). Petitioners’ reliance on Mutti does not remedy the deficiency discussed above regarding the “spout” of claim 1.” slip op. at 21
- ExcludeMotion to exclude, deniedDenied
“Declaration of Stuart Brown (Ex. 1002)” because Patent Owner contends that “Dr. Brown admittedly has no experience in the design or development of the no-spill cups at issue in the ’841 patent” and “thus no basis to render an opinion of a person ordinarily skilled in the art.” Paper 31, 1. Petitioners respond that Patent Owner “failed to make a timely objection within ten business days of the institution of trial in this matter as required by 37 C.F.R. 42.64(b)(1)” and that Dr. Brown “is more than qualified to opine as a technical expert witness in the relevant art.” Paper 30, 1. Patent Owner filed a Reply (Paper 34). We agree with Petitioners that Patent Owner’s Motion to Exclude is not in compliance with 37 C.F.R. § 42.64(b). Even if Patent Owner’s Motion complied with our rules, however, as discussed above, we considered the Brown Declaration against the full record and gave it appropriate weight. And even having considered the relevant portions of the Brown Declaration, we are persuaded by Patent Owner’s arguments regarding whether the relied upon references teach or suggest “spout.” We, thus, deny Patent Owner’s Motion to Exclude.” slip op. at 26
- Strike new argumentNew argument consideredDecided for petitioner
“We agree with Petitioners that the portions of Petitioners’ Reply identified by Patent Owner are properly responsive to arguments presented by Patent Owner in its briefs. Also, to the extent any of the identified portions can be deemed new arguments, even when those new arguments are considered, as discussed above, we are nevertheless persuaded by Patent Owner’s arguments regarding whether the relied upon references teach or suggest “spout,” and so the objection is overruled.” slip op. at 25
Patent outcomesUS 8,695,841 not shown unpatentableClaim construction§ 103 obviousnessPatents in suitUS 8,695,841 - Minerva Surgical, Inc. v. Hologic, Inc.Institution deniedPTAB · Sep 12, 2016 · IPR2016-00685 · APJ Richard E Rice · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–15 obvious over Edwards, Ortiz, Lichtman, and Jing.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For these reasons, we determine that Petitioner has not established a reasonable likelihood of prevailing on its challenges to independent claims 1 and 11 as obvious over Edwards, Ortiz, Lichtman, and Jing. As Petitioner’s arguments and evidence with respect to dependent claims 2–10 and 12–15 do not remedy the deficiencies in the arguments and evidence with respect to the independent claims, discussed above, we also determine that Petitioner has not established a reasonable likelihood of prevailing on its challenges to dependent claims 2–10 and 12–15.” slip op. at 29
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Skill in the Art Dr. Pearce testifies that a person of ordinary skill in the art would include someone who had, through education or practical experience, the equivalent of a bachelor’s degree in biomedical engineering, electrical engineering, mechanical engineering, or a related field and at least an additional two to three years of work experience developing or implementing electrosurgical devices. Ex. 1002 ¶ 47. Patent Owner does not provide evidence or argument on the level of ordinary skill. Prelim. Resp. 10 n.3. We adopt Dr. Pearce’s definition for purposes of this Decision.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“On this record, we agree that the Specification uses “frame” in accordance with its ordinary meaning. See, e.g., Ex. 1001, 17:37–49 (referring to “frame member 178” and “the frame”); Ex. 1013, 4; Ex. 1014, 3. We do not agree with Petitioner’s proposed claim construction, however, because it encompasses only one (apparently, the narrower) of the two dictionary definitions of “frame” cited in the Petition. See Pet. 15–16 (citing Ex. 1013, 4 (“an enclosing structure or case”); Ex. 1014, 3(“an arrangement of structural parts that gives form or support”)). Petitioner has not explained sufficiently why the broadest reasonable claim construction should not encompass both of the dictionary definitions. We determine that the broadest reasonable interpretation consistent with the Specification of “frame” encompasses: an arrangement of structural parts that gives form or support; and a structure coupled (e.g., removably or continuously) to a handle grip, that surrounds or encloses another component (e.g., inner sleeve).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Petitioner’s argument that using Ortiz’s mechanical expansion elements to expand Edwards’s applicator head would have simplified the device design by removing the need for a fluid or gaseous expansion medium is unpersuasive because it does not take into account that electrolytic solution is used in Edwards’s applicator head, not just for expansion, but also for ablation treatment. As such, Petitioner does not explain why using Ortiz’s mechanical expansion elements for expansion of Edwards’s applicator head, while continuing to use electrolytic solution in the applicator head for ablation treatment, would have resulted in any simplification or benefit. Dr. Pearce’s testimony that replacing the use of fluid or gaseous media with Ortiz’s mechanical expansion elements would have obviated potential safety issues, such as fluid leakage or contamination, similarly fails to account for the use of electrolytic solution in Edwards’s applicator head for ablation treatment and is, therefore, unpersuasive. See Ex. 1002 ¶ 64. Dr. Pearce’s testimony that incorporating Ortiz’s expansion elements would have improved contact between Edwards’s applicator head and the uterine walls is also unpersuasive. See Ex. 1002 ¶ 63. In particular, Dr. Pearce does not explain sufficiently why replacing the two rigid arms extending outward toward the walls of the uterus (as depicted in Figure 4 of Edwards) with the asserted flexures taught by Ortiz would have improved the ability of the device to conform to the shape of the uterus. See id. For example, Dr. Pearce’s testimony does not address or explain the disclosure in Edwards that “[c]ell necrosis apparatus 10 automatically conforms to the interior of the uterus.” See Ex. 1005, 6:33–41; see also id. at 7:37–40 (disclosing that, in one embodiment, “cell necrosis apparatus 10 conforms lightly with the interior of the uterus so that all, or almost all, of the endometrium is in contact with a conductive surface 24 of conforming member 20”).” slip op. at 27
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,095,348 - Minerva Surgical, Inc. v. Hologic, Inc.Institution deniedPTAB · Sep 12, 2016 · IPR2016-00680 · APJ Richard E Rice · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on either obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“4. Analysis An analysis under 35 U.S.C. § 103(a) requires more than “mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Upon consideration of the Petition and the Preliminary Response, we agree with, and adopt, Patent Owner’s argument, as summarized above, that the reasons advanced by Petitioner for combining elements of Yoon, Nady-Mohamed, Ortiz, and Jing to make the claimed invention are conclusory and insufficient. We provide additional analysis below.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Skill in the Art Dr. Pearce testifies that a person of ordinary skill in the art would include someone who had, through education or practical experience, the equivalent of a bachelor’s degree in biomedical engineering, electrical engineering, mechanical engineering, or a related field and at least an additional two to three years of work experience developing or implementing electrosurgical devices. Ex. 1002 ¶ 47. Patent Owner does not provide evidence or argument on the level of ordinary skill. Prelim. Resp. 11 n.3. We adopt Dr. Pearce’s definition for purposes of this Decision.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We have considered Petitioner’s proposed claim construction, but determine that the term “frame” does not require explicit construction for purposes of our Decision. We note, however, that this term was construed in a related case (IPR2016-00685).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We do not agree with Petitioner’s proposed construction because it is not consistent with the Specification’s description of flexures 124, 136 as strips that are capable of being bent or curved. See, e.g., Ex. 1001, 4:1–9, 13:8–14:31, Figs. 23, 28–30. Figures 23 and 28, for example, depict flexures 124 as strips that have been bent or curved as the result of relative motion between hypotubes 120 and 122. Id. at 13:8–15, 14:29–30, Figs. 23, 28. Indeed, Petitioner’s declarant, Dr. Pearce, testifies that “a person of skill in the art would understand the term ‘flexure’ to refer to a component capable of being bent or curved.” Ex. 1002 ¶ 56. On this record, we determine that the broadest reasonable interpretation consistent with the Specification of “flexures” is strips that are capable of being bent or curved. We note that a distinction with Petitioner’s proposed construction is that “designed to be bent,” for example, could mean a structure that has been bent but is no longer bendable or a structure that is bendable. “Capable of being bent,” on the other hand, means that the structure is further bendable.” slip op. at 12
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,095,348 - Life Technologies Corporation v. Unisone Strategic IP, Inc.All claims unpatentablePTAB · Jun 28, 2016 · CBM2015-00037 · APJ Jacqueline Wright Bonilla · CBM · Final written decision
Claims 52, 62, 67, 70–76, 81, 83–85, and 96 are unpatentable under § 101 because they claim the abstract idea of inventory management using generic computer components.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“degrees in inventory management or similar fields such as supply chain control or logistics” per se, and has “not studied, for a profession, the history of inventory management.” Id. at 34–35 (citing Ex. 2005, 16:14–21, 41:22– 42:3). According to Patent Owner, “Dr. Siegel admits he has no expertise in information management history and only attempted to educate himself in order to prepare his declaration.” Id. at 35. It is clear from Dr. Siegel’s testimony, however, that he has extensive experience in “the use of information technology with business strategy and operations,” has handled professionally “issues related to the integration of information” using computer and software systems, and holds advanced degrees in engineering and computer science. Ex. 1006 ¶¶ 3–11. We are satisfied that Dr. Siegel possesses sufficient qualifications to testify on matters that are relevant to our analysis here, including matters that do not concern the alleged “ancient” history of inventory management. PO Resp. 35. For example, Dr. Siegel testifies that relevant aspects of automated inventory management and VMI were well known before the priority date of the ’538 patent. Ex. 1006 ¶¶ 25–28 (citing Ex. 1018); Ex. 1027 ¶¶ 5–22 (citing Exs. 1020-1022, 1024, 1025). Dr. Siegel also testifies that the ’538 patent specification describes hardware and software that “require only generic computer implementation—not specialized hardware or software.” Ex. 1006 ¶¶ 43–54, 78–79, 89. In addition, Dr. Siegel discusses general concepts of inventory management using a computer and whether certain limitations of the challenged claims can be performed mentally, using pen and paper, or manually, without use of a computer. Id. at ¶¶ 40, 58–66, 80, 90.” slip op. at 23
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Both Petitioner and Patent Owner present constructions for several claim terms. Pet. 19–24; PO Resp. 12–23. For example, Patent Owner asserts that Petitioner misconstrues the term “customer” by defining it as “a buyer (person or organization) that uses the claimed inventory management.” PO Resp. 15; Pet. 19–20. Consistent with the specification of the ’538 patent, we adopt Patent Owner’s construction of “customer” as referring to a “buyer of products via the present invention” (Ex. 1001, 5:52– 56), i.e., a buyer of products using the inventory management system recited in the respective claims.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Patent Owner also presents constructions in relation to other claim terms such as “inventory restocking parameters provided by said customer,” “tracks” or “tracking,” “access” to information according to “assigned permissions or roles,” and “detecting.” PO Resp. 18–23. For many of the reasons stated in Petitioner’s reply to those constructions, we decline Patent Owner’s invitation to import inappropriately “computerized” aspects into those general terms, notwithstanding the fact that the challenged claims elsewhere recite computer components, such as a “computer,” “databases,” and “software.” Reply 23–25; see also Ex. 1001, 3:3–10 (stating that Customer Inventory System 130 allows manual inventory tracking). For purposes of this Decision otherwise, however, we need not expressly construe claim terms further. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 8
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“Based on the complete record before us, we determine that claim 67 is directed to the abstract idea of managing inventory in view of information. We are persuaded that managing inventory in view of collected and analyzed customer inventory, cost information, restocking information provided by a customer, as recited in claim 67, describes the basic concept of inventory management, i.e., a “fundamental economic practice.” Alice, 134 S. Ct. at 2356. The method of claim 67 is sufficiently similar in this regard to the method of hedging against financial risk at issue in Bilski, 130 S.Ct. 3218 (2010), and the idea of intermediated settlement at issue in Alice, 134 S. Ct. at 2356–57 (discussing Bilski). See also Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344 (Fed. Cir. 2013) (holding the abstract idea at the heart of a system claim to be “generating tasks [based on] rules . . . to be completed upon the occurrence of an event” (citation omitted)).” slip op. at 22
Patent outcomesUS 6,996,538 unpatentableClaim construction§ 101 eligibilitycites Alice · Mayo · BilskiPatents in suitUS 6,996,538 - PTAB · Jun 27, 2016 · IPR2016-00351 · APJ Christopher L Crumbley · IPR · Institution
The Board denied institution because Free-Flow did not show a reasonable likelihood that claims 1–14 were obvious over Perkins and Mykleby; its reason to combine was inadequate.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account the information presented, we conclude that the record does not establish that there is a reasonable likelihood that Free-Flow will prevail in challenging claims 1–14 of the ’288 patent as unpatentable. Accordingly, we do not institute trial.” slip op. at 2
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“forth an adequate reason to combine Perkins and Mykleby. Prelim. Resp. 13–24. We agree, and are not persuaded that Free-Flow has made an adequate showing that a person of ordinary skill in the art would have modified the web of Perkins with the perforations of Mykleby. Free-Flow’s first argument on this point is that one of ordinary skill in the art would have sought to combine the references because they are both “directed to the same problem.” Pet. 25. Automated argues that the defined “problem”—namely “automated, continuous production of inflatable sealed plastic bag units”—is not really a problem, but rather a definition of the field of technology to which Perkins and Mykleby pertain. Prelim. Resp. 15. We agree. Free- Flow’s argument may be enough to show that the two references are analogous art, see Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010), but simply demonstrating that a set of references are all directed to the same problem is not, by itself, a sufficient rationale to combine the references. See id. (upon finding that two references were directed to the same problem, the Court proceeded to analyze whether a person of ordinary skill in the art would have been motivated to combine the references); see also In re Kahn, 441 F.3d 977, 987–88 (Fed. Cir. 2006) (noting that the inquiry as to whether a person of ordinary skill in the art would have sought to combine the references “picks up where the analogous art test leaves off”). Accordingly, Free-Flow’s first argument is insufficient to show that a person of ordinary skill in the art would have combined Perkins and Mykleby.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“forth an adequate reason to combine Perkins and Mykleby. Prelim. Resp. 13–24. We agree, and are not persuaded that Free-Flow has made an adequate showing that a person of ordinary skill in the art would have modified the web of Perkins with the perforations of Mykleby. Free-Flow’s first argument on this point is that one of ordinary skill in the art would have sought to combine the references because they are both “directed to the same problem.” Pet. 25. Automated argues that the defined “problem”—namely “automated, continuous production of inflatable sealed plastic bag units”—is not really a problem, but rather a definition of the field of technology to which Perkins and Mykleby pertain. Prelim. Resp. 15. We agree. Free- Flow’s argument may be enough to show that the two references are analogous art, see Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010), but simply demonstrating that a set of references are all directed to the same problem is not, by itself, a sufficient rationale to combine the references. See id. (upon finding that two references were directed to the same problem, the Court proceeded to analyze whether a person of ordinary skill in the art would have been motivated to combine the references); see also In re Kahn, 441 F.3d 977, 987–88 (Fed. Cir. 2006) (noting that the inquiry as to whether a person of ordinary skill in the art would have sought to combine the references “picks up where the analogous art test leaves off”). Accordingly, Free-Flow’s first argument is insufficient to show that a person of ordinary skill in the art would have combined Perkins and Mykleby.” slip op. at 12
§ 103 obviousnessPatents in suitUS 7,767,288 - PTAB · Jun 27, 2016 · IPR2016-00350 · APJ Christopher L Crumbley · IPR · Institution
The Board denied institution because Free-Flow did not adequately show a reason to combine Perkins and Mykleby for claims 1–13.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Because Free-Flow has not made an adequate showing that a person of ordinary skill in the art would have had a reason to combine Perkins and Mykleby,5 we cannot conclude that Free-Flow has shown that “there is a reasonable likelihood that the petitioner would prevail with respect to” any of claims 1–13 on the ground of obviousness over the combination of Perkins and Mykleby. 35 U.S.C. § 314(b). We, therefore, decline to institute inter partes review of the challenged claims on this ground. III. CONCLUSION For the foregoing reasons, we conclude that the information presented in the Petition and Preliminary Response does not establish that there is a reasonable likelihood that Free-Flow will prevail in challenging claims 1–13 of the ’191 patent as unpatentable under § 103(a).” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“forth an adequate reason to combine Perkins and Mykleby. Prelim. Resp. 14–25. We agree, and are not persuaded that Free-Flow has made an adequate showing that a person of ordinary skill in the art would have modified the web of Perkins with the perforations of Mykleby. Free-Flow’s first argument on this point is that one of ordinary skill in the art would have sought to combine the references because they are both “directed to the same problem.” Pet. 29–30. Automated argues that the defined “problem”— namely “automated, continuous production of inflatable sealed plastic bag units”—is not really a problem, but rather a definition of the field of technology to which Perkins and Mykleby pertain. Prelim. Resp. 16. We agree. Free-Flow’s argument may be enough to show that the two references are analogous art, see Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010), but simply demonstrating that a set of references are all directed to the same problem is not, by itself, a sufficient rationale to combine the references. See id. (upon finding that two references were directed to the same problem, the Court proceeded to analyze whether a person of ordinary skill in the art would have been motivated to combine the references); see also In re Kahn, 441 F.3d 977, 987–88 (Fed. Cir. 2006) (noting that the inquiry as to whether a person of ordinary skill in the art would have sought to combine the references “picks up where the analogous art test leaves off”). Accordingly, Free-Flow’s first argument is insufficient to show that a person of ordinary skill in the art would have combined Perkins and Mykleby.” slip op. at 12
- Obviousness (§103) › Analogous artAnalogous artDecided for patent owner
“forth an adequate reason to combine Perkins and Mykleby. Prelim. Resp. 14–25. We agree, and are not persuaded that Free-Flow has made an adequate showing that a person of ordinary skill in the art would have modified the web of Perkins with the perforations of Mykleby. Free-Flow’s first argument on this point is that one of ordinary skill in the art would have sought to combine the references because they are both “directed to the same problem.” Pet. 29–30. Automated argues that the defined “problem”— namely “automated, continuous production of inflatable sealed plastic bag units”—is not really a problem, but rather a definition of the field of technology to which Perkins and Mykleby pertain. Prelim. Resp. 16. We agree. Free-Flow’s argument may be enough to show that the two references are analogous art, see Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010), but simply demonstrating that a set of references are all directed to the same problem is not, by itself, a sufficient rationale to combine the references. See id. (upon finding that two references were directed to the same problem, the Court proceeded to analyze whether a person of ordinary skill in the art would have been motivated to combine the references); see also In re Kahn, 441 F.3d 977, 987–88 (Fed. Cir. 2006) (noting that the inquiry as to whether a person of ordinary skill in the art would have sought to combine the references “picks up where the analogous art test leaves off”). Accordingly, Free-Flow’s first argument is insufficient to show that a person of ordinary skill in the art would have combined Perkins and Mykleby.” slip op. at 12
- Expert testimonyOther
“explain what problems exist in the web of Perkins, or how those problems would have been solved by Mykleby. By Free-Flow’s own analysis, the problem of “continuous, quick production of plastic bags” is addressed by the web and apparatus of Perkins itself; it is unclear why a person of ordinary skill in the art would have considered it desirable to further modify Perkins to include the variable perforations of Mykleby. Free-Flow simply states that a person of ordinary skill in the art “would have understood the potential for the variable perforations disclosed by Mykleby to increase production rate of sealed plastic bag units and decrease cost associated with torn or damaged units by facilitating separation of individual bag units.”4 Pet. 31. But as Dr. Kimmel testifies, Mykleby identifies the benefit of variable-length perforations as “allow[ing] the pouches to separate from the lower perforated portion first without separating the upper perforated portion. . . . These variable perforations allow individual pouches to be filled with fluid and separated but remain connected until the sheet has moved through the entire automatic packaging apparatus.” Ex. 1004 ¶ 74. Free-Flow does not explain, nor can we discern, why this partial separation would “increase production and decrease costs” when used in the web of Perkins. 4 The only relevant evidence Free-Flow cites in support of this statement is paragraph 77 of Dr. Kimmel’s Declaration, which merely parrots the language of the Petition word for word, without providing any additional analysis or explanation. Compare Ex. 1004 ¶ 77, with Pet. 31.” slip op. at 14
§ 103 obviousnessPatents in suitUS 7,550,191 - PTAB · Jun 22, 2016 · IPR2016-00444 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution on both § 103 grounds because Petitioner did not show the claimed perforation lines or a reason to combine the references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition and the Preliminary Response, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that any of the claims it challenges are unpatentable. Accordingly, we do not institute inter partes review.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“by both parties, we are not persuaded that Petitioner has made an adequate showing that Titchenal teaches or suggests the recited “opposite edge lines of perforations.” Treating Titchenal’s fill side as the “inflation edge,” Titchenal clearly teaches perforations “that extend inward from the inflation edge.” Ex. 1007, 3:19–25, Fig. 1. Petitioner argues that this same disclosure teaches or suggests the recited “opposite edge lines of perforations . . . that extend inward from the opposite edge.” Pet. 42–43. But Titchenal does not show perforations extending inward from the edge opposite its fill side. Ex. 1007, Fig. 1. Slit 38, slit 40, and the land between them cannot be the claimed “line[] of perforations,” because Petitioner relies on slit 40 to be the claimed “continuous gap” that “space[s] apart” the inflation-edge and opposite-edge lines of perforations. Without slit 40 as part of the “line[] of perforations,” Titchenal shows, at best, a single perforation in slit 38, and a single perforation does not constitute a “line[] of perforations.” And Petitioner does not offer any explanation for why a person of ordinary skill in the art would interpret Titchenal’s single line of perforations extending inward from one side as suggesting two lines of perforations, each extending inward from opposite sides. Pet. 42–43. The only evidence to which Petitioner directs us with respect to this point is paragraph 91 of Dr. Kimmel’s declaration, which does nothing more than parrot the language of the Petition word for word, without providing any analysis or underlying facts to support the opinion. Compare Ex. 1004 ¶ 91, with Pet. 42–43. “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). And “[m]erely repeating an argument from the Petition in the declaration of a proposed expert does not give that argument enhanced probative value.” Kinetic Techs., Inc. v. Skyworks Solutions, Inc., Case IPR2014-00529, slip op. at 15 (PTAB Sep. 23, 2014) (Paper 8). Because Petitioner has not made an adequate showing that the limitations of claim 1 are taught or suggested by the combination of Peper and Titchenal, we cannot conclude that Petitioner has demonstrated “a reasonable likelihood that the petitioner would prevail with respect to” claim 1. 35 U.S.C. § 314(b). Accordingly, we do not institute inter partes review of claim 1 on this ground. Because claims 2 and 5 both depend from claim 1, we also do not institute inter partes review of those claims on this ground.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“33. This argument may be enough to demonstrate that the three references are analogous art, which requires that the references be either “in the field of the [inventor’s] endeavor or . . . reasonably pertinent to the problem with which the inventor was concerned in order to rely on that reference as a basis for rejection.” In re Kahn, 441 F.3d 977, 986–87 (Fed. Cir. 2006) (citing In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992)). But this similarity among references is not sufficient to demonstrate that a person of ordinary skill in the art would have sought to combine the teachings of the references. Showing this requires “some articulated reasoning with some rational underpinning” to combine the known elements in the manner required in the claim at issue. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Accordingly, Petitioner’s first argument is insufficient to show that a person of ordinary skill in the art would have combined Sperry with Peper and Titchenal.” slip op. at 15
- Expert testimonyPetitioner expert discountedDecided for patent owner
“1007, Fig. 1. Slit 38, slit 40, and the land between them cannot be the claimed “line[] of perforations,” because Petitioner relies on slit 40 to be the claimed “continuous gap” that “space[s] apart” the inflation-edge and opposite-edge lines of perforations. Without slit 40 as part of the “line[] of perforations,” Titchenal shows, at best, a single perforation in slit 38, and a single perforation does not constitute a “line[] of perforations.” And Petitioner does not offer any explanation for why a person of ordinary skill in the art would interpret Titchenal’s single line of perforations extending inward from one side as suggesting two lines of perforations, each extending inward from opposite sides. Pet. 42–43. The only evidence to which Petitioner directs us with respect to this point is paragraph 91 of Dr. Kimmel’s declaration, which does nothing more than parrot the language of the Petition word for word, without providing any analysis or underlying facts to support the opinion. Compare Ex. 1004 ¶ 91, with Pet. 42–43. “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). And “[m]erely repeating an argument from the Petition in the declaration of a proposed expert does not give that argument enhanced probative value.” Kinetic Techs., Inc. v. Skyworks Solutions, Inc., Case IPR2014-00529, slip op. at 15 (PTAB Sep. 23, 2014) (Paper 8).” slip op. at 10
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 7,897,220
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.