• Donghee America, Inc. / Donghee Alabama, LLC v. Plastic Omnium Advanced Innovation And ResearchAll claims unpatentable
  PTAB · Dec 11, 2018 · IPR2017-01605 · APJ Christopher M Kaiser · IPR · Final written decision

  Claims 1–3, 7, 11, 12, and 14 are unpatentable: claims 1–3, 12, and 14 are anticipated by Linden, and claims 7 and 11 are obvious over Linden and Hata.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “article whose surface has at least one empty or concave part.” Id. at 11 (citing Ex. 1001, 1:66–67; Ex. 1007 ¶ 15). Patent Owner agrees. PO Resp. 15. The ’253 patent states that “[t]he term ‘hollow body’ is understood to mean any article whose surface has at least one empty or concave part.” Ex. 1001, 1:66–67. Where an inventor defines specific terms used to describe an invention, we will give effect to those definitions, as long as they are set out “with reasonable clarity, deliberateness, and precision,” “so as to give one of ordinary skill in the art notice of the change” in meaning. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Here, the phrase “is understood to mean,” as used in the ’253 patent, signals that the inventor presents a clear, deliberate, and precise definition. Accordingly, we interpret “hollow body” as having the definition given it in the ’253 patent, “any article whose surface has at least one empty or concave part.”” slip op. at 6

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

    “supporting its proposed construction of “incorporate” as “insert.” First, Petitioner argues that the language of the ’253 patent requires a construction of “incorporating” as encompassing “inserting” rather than as limited to “attaching.” Reply 2–4. Both parties argue that the “incorporating” recited in the challenged claims must occur before the mold closes to form the hollow body. PO Resp. 16; Reply 2–3. We agree. Ex. 1001, 6:2–14 (“. . . after said step of incorporating, closing said mould . . .”). Thus, it is important to note the processes that the ’253 patent describes as occurring before, during, and after mold closure. Because “incorporating” must occur before mold closure, the process of “incorporating” may not be limited to any process that the patent describes as occurring during or after mold closure. Petitioner is correct that the ’253 patent describes a process in which a preassembled structure for supporting an accessory “may . . . be fastened by welding to the wall of the hollow body, upon closing the mould,” i.e., during, not before, mold closure. Ex. 1001, 4:23–30. Thus, the language of the ’253 patent does not support construing the term “incorporating” as limited to “attaching.” Petitioner also argues that both parties agreed in the related infringement suit in District Court that the proper construction of “incorporating” under the Phillips standard, used in that forum, was “inserting.” Reply 7–8 (citing Ex. 1010, at Ex. A, 4). Specifically, in that litigation, Patent Owner agreed that the correct construction of “incorporating at least one of an accessory or a duct within the hollow body” was “inserting an accessory or duct into the hollow body.” Ex. 1010, at Ex. A, 4. Here, we apply the broadest-reasonable-interpretation standard. 37 C.F.R. § 42.100(b) (2016). “The broadest reasonable interpretation of a claim term may be the same as or broader than the construction of a term under the Phillips standard. But it cannot be narrower.” Facebook, Inc. v. Pragmatus AV, LLC, 582 F. App’x 864, 869 (Fed. Cir. 2014) (non-precedential). Here, for the term “incorporating,” Patent Owner’s proposed broadest reasonable interpretation (“attaching”) is narrower than the Phillips construction Patent Owner has advanced (“inserting”). Thus, “attaching” cannot be the broadest reasonable interpretation of “incorporating.” Other than Patent Owner’s proposed “attaching” construction, the only construction the parties have proposed either in this case or in the related District Court case is Petitioner’s proposed “inserting” construction. PO Resp. 15–20 (discussing only “inserting” and “attaching” constructions); Reply 2–9 (Petitioner arguing in favor of “inserting”); Ex. 1010, at Ex. A, 4 (both parties proposing “inserting”). The ’253 patent supports such a construction, because it describes at least some of its embodiments as involving only insertion of an object between the sheets that will form the hollow body before mold closure. Ex. 1001, 4:23–30. Accordingly, for the foregoing reasons, we adopt Petitioner’s proposed construction of “incorporating” as “inserting.”” slip op. at 10

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “Finally, Patent Owner directs us to the testimony of Professor Tim Osswald as support for its view that “incorporate” should mean “attach.” PO Resp. 16 (citing Ex. 2001 ¶¶ 40–42). In relevant part, this testimony states that, “[a]fter reading the specification of the ’253 patent, one of ordinary skill in the art would understand and interpret the word ‘incorporating’ to mean ‘fastening’ or ‘attaching’ so that the accessory or duct becomes part of the hollow body.” Ex. 2001 ¶ 42. Professor Osswald does not cite any evidence in support of his testimony. “[C]onclusory, unsupported assertions by experts as to the definition of a claim term are not useful.” Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005) (en banc). Accordingly, we give little weight to Professor Osswald’s statement regarding the proper construction of “incorporate.” See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he [PTAB] is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations . . . .” (citations omitted)).” slip op. at 9

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

    “preform which has at least one opening for that purpose, to be applied to the inside surface of the wall of the expanded hollow body.” Id. at 3:62–4:3. Patent Owner argues that this teaching is insufficient to disclose attaching the surge cup to the wall of the hollow body before the mold closes. PO Resp. 23–24. We agree that Linden does not teach attaching its accessory to the inside wall of the fuel tank before the mold closes around the preform. Instead, in Linden, the mold halves are closed around the preform and the mandrel, and “a suitable blowing agent . . . is introduced under pressure” through the mandrel, causing the preform to expand to press “against the inside wall defining the mold cavity,” and only then is the holding means for the accessory displaced to be brought into contact with the inner wall of the expanded preform, welding the holding means to the wall. Ex. 1003, 7:27–55, 8:11–29, Figs. 1–3. But, as discussed above, we disagree with Patent Owner about the proper construction of “incorporating” in the challenged claims. Claim 1 requires only that an accessory or a duct be “incorporat[ed] . . . within the hollow body” before mold closure occurs, and we construe “incorporating” to mean “inserting,” without requiring “attaching.” Thus, it is unimportant that Linden fails to teach attaching the surge cup to the wall before mold closure. All that is required is that Linden disclose inserting the surge cup into the preform before mold closure, and Linden does disclose this. Id. at 3:62–4:3, 7:27–49, Figs. 1–3. The next question is whether Linden discloses “after said step of incorporating, closing [the mold] in a way which eliminates any interface between said at least one of said accessory or said duct and an external atmosphere outside of the hollow body.” As discussed above, Linden discloses closing the mold halves after placing the additional body within the preform. But Linden discloses that “[a]t its lower end the preform 28 is pressed around the mandrel 14 by virtue of closure of the mold halves 10a and 10b.” Id. at 7:40–42, Fig. 2. Because mandrel 14 is hollow, id. at 6:35–39; 6:46–54, it is not completely clear that closure of Linden’s hollow body around mandrel 14 necessarily eliminates any interface between the additional body inside Linden’s hollow body and the atmosphere outside the hollow body. On the other hand, the closure of the mold described in the ’253 patent occurs with blowing nozzle 6 “positioned between the two parts of the [mold],” and “blowing air is injected under pressure via the nozzle,” which is quite similar to the use of hollow mandrel 14 in Linden. Ex. 1001, 5:50–57. Given the similarity between Linden’s method and the method described in the ’253 patent, we determine that Petitioner has shown by a preponderance of the evidence that Linden discloses the limitation of claim 1 requiring the step of, “after said step of incorporating, closing [the mold] in a way which eliminates any interface between said at least one of said accessory or said duct and an external atmosphere outside of the hollow body.” The final question with respect to claim 1 is whether Linden discloses that the additional body incorporated within the hollow body “is supported by a preassembled structure which comprises at least one device configured to anchor said preassembled structure to an internal wall of the hollow body.” Petitioner argues that Linden’s “[h]olding means 24 is a preassembled structure” in which “leg members 44, 45” have “enlarged foot portion[s] 36.” Pet. 18 (citing Ex. 1003, 9:23–34). We agree. “[H]olding means 24 . . . substantially comprises first and second support or leg members 44, 45,” and “support or leg members 44, 45 are each provided with an enlarged foot portion 36 of substantially plate-like configuration.” Ex. 1003, 9:23–34. Even if Linden’s holding means 24 were not in the aggregate the recited “preassembled structure,” each leg member 44, 45, taken together with its respective foot portion 36 is. Ex. 1001, 4:26–28 (describing a “preassembled structure” as “for example, an arm provided with a tab for fastening to the wall of the hollow body”). Linden’s “foot portions 36 are pressed against the inside surface, which is still hot and thus plastic, . . . of the hollow body . . . thereby to produce a welded joint between the foot portions 36 and the inside surface.” Id. at 9:34–42. Petitioner has shown by a preponderance of the evidence that Linden discloses the limitation of claim 1 requiring that the accessory or duct be “supported by a preassembled structure which comprises at least one device configured to anchor said preassembled structure to an internal wall of the hollow body.”” slip op. at 19

  Patent outcomesUS 7,166,253 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 7,166,253
• Hengdian Group Dmegc Magnetics Co., Ltd. / Zhejiang Innuovo Magnetics Co., Ltd. et al. v. Hitachi Metals, Ltd.No claims unpatentable
  PTAB · Nov 2, 2018 · IPR2017-01312 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  Petitioner did not prove claims 1–12 unpatentable: Zhou-based combinations lacked a supported motivation to combine, and Ren did not anticipate or render the claims obvious.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We do not observe meaningful differences between the parties’ assessment of a person having ordinary skill in the art. We further note that both assessments appear consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). Our determination regarding the patentability of the challenged claims does not turn on the differences between these definitions. We adopt Petitioner’s assessment, but note that our conclusions would be the same under Dr. Moran’s assessment. B.” slip op. at 7

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

    “reasonable construction in light of the specification of the patent in which [the claims] appear[].” 37 C.F.R. § 42.100(b) (May 2, 2016); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016).9 Consistent with the broadest reasonable construction, claim terms are presumed to have their ordinary and customary meaning as understood by a person of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). 9 The revised claim construction standard for interpreting claims in inter partes review proceedings as set forth in the final rule published October 11, 2018 does not apply to this proceeding, because the new “rule is effective on November 13, 2018 and applies to all IPR, PGR and CBM petitions filed on or after the effective date.” Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51340 (Oct. 11, 2018) (to be codified at 37 C.F.R. pt. 42). For purposes of the Institution Decision, we construed “controlled environment” as set forth in independent claims 1 and 2 to mean “an air environment in which one or more conditions are controlled.” Dec. on Inst. 10. The parties do not contest our construction of the term “controlled environment” (see PO Resp. 3; Pet. Reply 1; Supp. PO Resp. 3–5; Supp. Pet. Reply 2), and we see no reason to modify that construction in light of the record developed at trial. C.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “that Zhou is unclear as to whether its test atmosphere is an air or inert environment. Much of the evidence, as described above, could support either interpretation. It is Petitioner’s burden, however, to establish facts supporting its challenge that claims 1, 2, 6, and 8–12 would have been obvious over the combined teachings of Zhou and Young by a preponderance of the evidence. 35 U.S.C. § 316(e); see also Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). “Failure to prove the matter as required by the applicable standards means that the party with the burden of persuasion loses on that point—thus, if the fact trier of the issue is left uncertain, the party with the burden loses.” Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008). Because Petitioner’s argument that a POSA would have been motivated to apply the environmental conditions of Zhou’s retention step to Young’s open-to-the air pressing step is based on its contention that Zhou’s test atmosphere was air, and because Petitioner has not established that Zhou’s test atmosphere was air, we are not persuaded that Petitioner has made a sufficient showing that a POSA would have combined the teachings of Zhou and Young in the manner proposed. Accordingly, we find that Petitioner has not shown by a preponderance of the evidence that claims 1, 2, 6, and 8–12 of the ’565 patent are unpatentable under 35 U.S.C. § 103 as obvious over the combined teachings of Zhou and Young. F.” slip op. at 23

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

    “We agree with Patent Owner. As set forth above, we interpreted “controlled environment” to mean “an air environment in which one or more conditions are controlled.” See supra Section II.B. Ren discloses controlling the conditions of an isolated, inert gas environment. See, e.g., Ex. 1003, 2:48–54 (“The isolated environment generally comprises . . . means for supplying inert gas into the enclosure and desiccating agents disposed between the inert gas supply means and the enclosure, along with desiccating agents within the enclosure.”), 7:53–57 (“Pumping an inert gas, such as nitrogen, into a sealed environment is an effective means for reducing the oxygen content from in [sic] the surrounding environment, but this does not reduce or eliminate H2O from the surrounding environmental humidity.”), 9:16–20 (“After placing the individually-wrapped packages of magnetic powder into the isolated environment, a flow of inert gas” into the isolated environment is activated, and “[t]he inert gas purges humidity and/or oxygen from the isolated environment.”). Consequently, we are not persuaded that Petitioner has established that Ren teaches “providing a controlled environment having a temperature ranging from 5° C. to 30° C. and a relative humidity ranging from 40% to 65%” as recited in independent claims 1 and 2. Therefore, based on our review of the record, we find that Petitioner has not established by a preponderance of the evidence that claims 1 and 2, and claims 6 and 8 that depend directly therefrom, are anticipated by Ren. H.” slip op. at 26

  Patent outcomesUS 6,461,565 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,461,565
• L’Oréal USA, Inc. v. Liqwd, Inc.Rehearing denied
  PTAB · Oct 18, 2018 · PGR2018-00024 · APJ Christopher M Kaiser · PGR · Rehearing

  The Board denied rehearing, leaving in place its denial of institution because Petitioner did not show an abuse of discretion in construing “bleach powder” or assessing written-description support.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). We “review [our] decision for an abuse of discretion.” Id. § 42.71(c). In addition, we may not consider an argument made in a request for rehearing unless the request “specifically identif[ies] . . . the place where [that argument] was previously addressed in a motion, an opposition, or a reply.” Id. § 42.71(d). After considering the Request for Rehearing, we determine that Petitioner has not demonstrated that we abused our discretion in denying institution. Accordingly, we deny the Request for Rehearing. slip op. at 2

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

    “reconsider the issue of our construction of “bleach powder.” The parties agree that the specification of the ’954 patent does not contain an express definition of “bleach powder,” so we are required to give the term its “ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure.” Translogic, 504 F.3d at 1257; see Pet. 27–28 (arguing that, “[a]bsent any . . . clear intent, the BRI must be consistent with the interpretation that those skilled in the art would reach,” then offering no particular construction of “bleach powder”); Prelim. Resp. 29–30 (“A person of ordinary skill in the art would have understood that bleach powder combines persulfates with alkalinizing compounds . . . in a fine dry particulate form.” (citing only sources outside the ’954 patent)). In arguments that we may consider, the parties draw our attention to six sources of evidence about the ordinary understanding in the art of “bleach powder.” Req. 2–5 (citing Ex. 1039, 48:9–49:9); Prelim. Resp. 29– 30 (citing Ex. 1002, 15:45–65; Ex. 1011, 17; Ex. 2005, 6; Ex. 2007, 3; Ex. 2012 ¶¶ 34–36). There is evidence that supports Patent Owner’s view that the ordinary meaning of “bleach powder” is a powder that contains an alkalizing agent in addition to persulfates, as opposed to merely a persulfate powder. A textbook called “Hair Preparations” by Thomas Clausen and others states that, at least in paste bleaches, “a bleach powder” is used that “consists of a peroxodisulfate, an alkalinizing agent,” and other ingredients. Ex. 1011, 17. In the context of cream and gel bleaches, this reference teaches that “[p]eroxosulfate . . . can be added as a bleaching powder” but is silent about whether the “bleaching powder” contains any additional ingredients. Id. In a book chapter on “Hair Coloring” by Keith C. Brown, a “bleach booster” powder is discussed that “is usually a mixture of ammonium and potassium persulfates” and that has “metasilicates mixed in with the persulfates” to provide “[a]lkaline pH.” Ex. 2005, 6. Against this evidence is the testimony of Dr. Borish that “powder lighteners” or “bleach powders” include “persulfate salts.” Ex. 1039, 48:9–49:9. But Dr. Borish does not state affirmatively that the persulfate salt is all that is required for a powder to be a bleach powder, only that a persulfate salt is a necessary component of a bleach powder. Id. Accordingly, his testimony does not outweigh the evidence that, to a person of ordinary skill in the art, a bleach powder contains both a persulfate salt and an alkalizing agent. We are not persuaded, therefore, that we abused our discretion by construing “bleach powder” to require both of those components.” slip op. at 6

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

    “After considering the Request for Rehearing, we determine that Petitioner has not demonstrated that we abused our discretion in denying institution. Accordingly, we deny the Request for Rehearing.” slip op. at 2

  Claim construction
  Patents in suitUS 9,668,954
• Formlabs Inc. v. Envisiontec, Inc.All claims unpatentable
  PTAB · Oct 5, 2018 · IPR2017-01258 · APJ Christopher M Kaiser · IPR · Final written decision

  Claims 9–15 are unpatentable: claims 9, 11, 12, and 15 as anticipated; claims 13–15 as obvious over Akamine; and claim 10 as obvious over Akamine, Mizukami, and McDonald.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “Owner. During prosecution, the applicant argued that “the general understanding of the term ‘gel-like elastic material[]’ to one of ordinary skill in the art . . . is a material that has the required elasticity for being deformable, yet [sic] the elasticity for recovering its original state after deformation.” Ex. 1004, 15. An inventor may define specific terms used to describe an invention, but must do so “with reasonable clarity, deliberateness, and precision” and must “‘set out his uncommon definition in some manner within the patent disclosure’ so as to give one of ordinary skill in the art notice of the change” in meaning. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387–88 (Fed. Cir. 1992)). This definition may appear in either the patent specification or the prosecution history. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002); see also Teva Pharms. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1343 (Fed. Cir. 2015) (“Applicants can define . . . claim scope during prosecution,” just as they can in a patent specification.). In our view, the statement in the prosecution history that “the general understanding of . . . ‘gel-like elastic material[]’ . . . is a material that has the required elasticity for being deformable, yet the elasticity for recovering its original state after deformation” is a reasonably clear, deliberate, and precise definition of the term. Ex. 1004, 15 (emphasis added). Accordingly, at least on this record, this is the proper interpretation of “gel-like elastic material.” Thus, we construe “gel-like elastic material” as “a material that has the required elasticity for being deformable, yet the elasticity for recovering its original state after deformation.”” slip op. at 7

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

    “2. “Adhesion” Patent Owner proposes construing the term “adhesion” as “separation force per unit area.” PO Resp. 26–27. Petitioner argues that no construction of “adhesion” is necessary but does not otherwise object to Patent Owner’s proposed construction. Reply 4. The evidence of record supports Patent Owner’s proposed construction. Pet. 28 (arguing that “the adhesion of the silicone coating to the hardened resin is approximately 1.85 x 104 N/m2”); Ex. 1001, 1:65–2:7 (suggesting that adhesion is “independent[] of [the] hardened surface area”); Ex. 1007, Fig. 5 (reporting “Adhesion strength” in units of “N/m2”); Ex. 2001 ¶ 46 (“Adhesion is a well-known evaluation of the force per unit area required to separate two surfaces.”); Ex. 2002, 147:13–149:9 (“The adhesion strength is an overall number that is agnostic of the actual cross-section[al] area that is being produced.”). Accordingly, on the record developed during this proceeding, we conclude that the proper construction of “adhesion” is “separation force per unit area.”” slip op. at 8

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

    “Because Petitioner’s proposed construction is broader than the alternative, if it is reasonable, it is the broadest reasonable construction we have been offered. The parties dispute whether this construction is reasonable. There is, however, no need for us to resolve this dispute. As discussed below, Petitioner has shown by a preponderance of the evidence that the challenged claims are unpatentable even under the narrower “at least twice” construction. Because the claims are unpatentable under the narrower construction, they also would be unpatentable under the broader construction, and we need not decide whether the broader construction is reasonable. Accordingly, for purposes of this decision, we base our analysis on Patent Owner’s construction of “greater by a multiple” as “at least twice.”” slip op. at 10

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

    “As noted above, “gel-like elastic material” is “a material that has the required elasticity for being deformable, yet the elasticity for recovering its original state after deformation.” Akamine discloses that layer 7 is “elastically deformable” and that layer 7 elastically deforms when fabricated article 10 is separated from transparent plate 4. Id. Akamine also discloses that the sequence of preparing a gap between the cured layers and the irradiation face, then curing a new layer, then peeling the fabricated article off the irradiation face is repeated to create a series of layers making up the fabricated article. Id. ¶ 27. Based on these disclosures, Petitioner directs us to evidence suggesting that a person of ordinary skill in the art would have understood that layer 7 returns to its original shape after deforming upon separation of fabricated article 10 from transparent plate 4. Pet. 18 (citing Ex. 1002 ¶ 59). In addition, Akamine discloses that layer 7 is part of “an irradiation face” that “is a composite molded body formed with a transparent glass or plastic plate.” Ex. 1005 ¶ 26. Patent Owner does not contest this evidence or Petitioner’s assertion that Akamine anticipates claim 9. We find that Petitioner has shown by a preponderance of the evidence that Akamine discloses the “gel-like elastic material that is applied directly to the plane” limitation of claim 9.” slip op. at 16

  Patent outcomesUS 7,195,472 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,195,472
• Argentum Pharmaceuticals LLC v. Alcon Research, Ltd.No claims unpatentable
  PTAB · Sep 20, 2018 · IPR2017-01053 · APJ Grace Karaffa Obermann · IPR · Final written decision

  Claims 1–28 were not shown unpatentable under § 103 because the proposed combinations lacked a persuasive reason to make the required modifications and meet the claimed limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Petitioner submits that such a person would have had a Doctorate in microbiology or chemistry (or a related field) with at least a few years of experience in the development of ophthalmic formulations. Pet. 7. Alternatively, in Petitioner’s view, that person would have had a Bachelor’s or Master’s Degree combined with significant (5 years or more) practical experience developing ophthalmic formulations. Id. Patent Owner, for its part, advances a definition that “does not differ materially” from that proposed by Petitioner. Resp. 5. Petitioner’s definition is comparable to the level of skill reflected in the asserted prior art. The prior art itself is sufficient to demonstrate the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself can reflect appropriate level of ordinary skill in the art). To the extent more specified findings are required, we adopt the definition proposed by Petitioner. Pet. 7. We observe, however, that there is no appreciable difference between the parties’ respective definitions that would “materially” alter the outcome of this decision based on our acceptance of one definition over the other. Resp. 5.” slip op. at 5

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

    “Pet. 5–7; Dec. 7–8. Patent Owner tacitly agrees. See Resp. 1 (stating that a “self-preserved” composition is “one that has sufficient antimicrobial activity to pass standard tests for ‘preservative efficacy’ without needing a conventional preservative”). Accordingly, for reasons set forth in our decision instituting review in the Apotex IPR, we determine that: (a) The preamble term “self-preserved” breathes life and meaning into the claims, and is construed as a limitation of claims 1–28; and (b) The broadest reasonable interpretation of “self-preserved” compositions is “compositions that do not contain a conventional antimicrobial preservative.” Apotex IPR, Paper 9, 5–6; Dec. 7–8. Schneider, which is asserted in each ground of unpatentability stated in the Petition, informs that edetate disodium (“EDTA”) and benzalkonium chloride (“BAC”) were conventional antimicrobial preservatives known and available at the time of the invention—an issue not meaningfully disputed by Petitioner. Ex. 1007, 7:14–21; Pet. 15. Our claim construction findings are supported by the specification of the ’299 patent, which states that “[t]he multi-dose compositions of the present invention, which do not contain a conventional antimicrobial preservative, are referred to herein as being ‘self-preserved’.” Ex 1001, 3:27–29. The specification identifies BAC as an example of a conventional antimicrobial preservative excluded from the self-preserved composition of the challenged claims. Id. at 4:23–25. No other claim term requires express construction for the purposes of this decision. See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only claim terms in controversy need be construed, and then only to the extent necessary to resolve the controversy).” slip op. at 7

  • Prior constructionPrior construction adoptedDecided for patent owner

    “Petitioner argues that we should adopt the claim construction resolved in the Apotex IPR, as we did in the decision on institution in this case. Pet. 5–7; Dec. 7–8. Patent Owner tacitly agrees. See Resp. 1 (stating that a “self-preserved” composition is “one that has sufficient antimicrobial activity to pass standard tests for ‘preservative efficacy’ without needing a conventional preservative”). Accordingly, for reasons set forth in our decision instituting review in the Apotex IPR, we determine that: (a) The preamble term “self-preserved” breathes life and meaning into the claims, and is construed as a limitation of claims 1–28; and (b) The broadest reasonable interpretation of “self-preserved” compositions is “compositions that do not contain a conventional antimicrobial preservative.” Apotex IPR, Paper 9, 5–6; Dec. 7–8. Schneider, which is asserted in each ground of unpatentability stated in the Petition, informs that edetate disodium (“EDTA”) and benzalkonium chloride (“BAC”) were conventional antimicrobial preservatives known and available at the time of the invention—an issue not meaningfully disputed by Petitioner. Ex. 1007, 7:14–21; Pet. 15. Our claim construction findings are supported by the specification of” slip op. at 6

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Petitioner asserts that an ordinarily skilled artisan “would have retained as much of” Formulation A “as feasible, as this was already an FDA-approved formulation, marketed as Travatan®.” Pet. 15; Ex. 1002 ¶¶ 46–47. But Petitioner’s challenge incongruously depends on at least six modifications to Formulation A; seven, if attaining UPS preservative efficacy requirements is not an inherent property of the modified composition. Petitioner does not address, much less explain, how or why an ordinarily skilled artisan, undertaking those six or seven modifications, would have done so with a reasonable expectation of success in arriving at a “self-preserved” composition using zinc as the sole preservative—in a field where zinc “had never before been the sole preservative in a marketed ophthalmic drug.” Resp. 9; Ex. 2023 ¶ 46; Ex. 2025 ¶ 30. The Petition does not articulate a rational reason why a person of ordinary skill in the art, setting out to improve Formulation A, would have selected the particular combination of ingredients required by claim 1. Formulation A bears almost no resemblance to the composition of claim 1, lacking three of the four required ingredients (zinc ions, sorbitol, and propylene glycol) and containing two others (BAC and EDTA) that are excluded by the “self-preserving” terms of the claim. Compare Ex. 1001, claim 1, with Ex. 1007, 9:25–42 (Table, Formulation A). And even if we set aside those hurdles, the challenge fails for lack of persuasive evidence showing how or why an ordinarily skilled artisan would have resolved to include the claimed ingredients in the specified concentrations, while at the same time limiting anionic species (to the extent included) to a concentration of “less than 15 mM.” Ex. 1001, claim 1. Petitioner fails to establish that the subject matter of claim 1 would have been obvious over the combined disclosures of Schneider, Xia, and Chowhan—with or without the additional disclosure of Gadd. Pet. 2–3.” slip op. at 26

  Patent outcomesUS 8,268,299 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,268,299
• Bedra, Inc. / Berkenhoff GmbH et al. v. Seong, Ki ChulInstitution denied
  PTAB · Aug 29, 2018 · IPR2018-00667 · APJ Christopher M Kaiser · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–5 were unpatentable over Tomalin or Mukherjee and Briffod I.

  RulingsInstitution decision

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

    “On the present record, we are persuaded that Patent Owner’s construction is correct. Although it is true that the ’535 patent describes “produc[ing] uniform cracks in the coating layer and the alloy layer to form a porous structure on the surface,” Ex. 1002, 6:51–52, it is not clear on the present record that this necessarily means the cracks themselves are the surface pores. Instead, “the porous nature of the wire” merely “arises from the cracks in the alloy layer and the coating layer.” Id. at 4:32–33 (emphasis added). Thus, the ’535 patent does not necessarily treat the cracks as synonymous with the pores; it also may allow the creation of pores merely as a result of the creation of separate cracks. In addition, the ’535 patent places restrictions on the shape of cracks that are more consistent with Patent Owner’s proposed construction than with that proposed by Petitioner. The ’535 patent consistently describes the cracks as directional and oriented perpendicular to the length of the wire. Id. at 4:43–45 (“the alloy layer includes cracks having a direction perpendicular to the longitudinal direction of the wire”), 5:35–37 (“the cracks have a direction approximately perpendicular to the longitudinal direction of the wire”), 6:53–55 (“These cracks are propagated through the grain boundary of the coating layer and the direction of the propagation is perpendicular to the longitudinal direction of the wire”). Interpreting “crack” as synonymous with “pore,” which refers to any small hole or opening without any limit on shape, Ex. 2004, is inconsistent with the description of cracks in the ’535 patent as directional. Far more consistent with this description is Patent Owner’s proposed construction of “crack” as “narrow break.” Accordingly, on the present record, we construe “crack structure” as “an arrangement of narrow breaks.”” slip op. at 6

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

    “evidence currently of record, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “In other words, for the ’535 patent to be entitled to the priority date of the Korean application, the Korean application must “contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.” 35 U.S.C. § 112(a). The question Petitioner presents here is whether the Korean application adequately describes the presence of an alloy layer with the “crack structure on its surface” that is recited in the challenged claims.” slip op. at 8

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedReference not prior artDecided for patent owner

    “application are entitled to the benefit of a foreign priority date if the corresponding foreign application supports the claims in the manner required by [35 U.S.C. §] 112.” In re Gosteli, 872 F.2d 1008, 1010 (Fed. Cir. 1989).” slip op. at 7

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosure
  Patents in suitUS 6,482,535
• Commvault Systems, Inc. v. Realtime Data LLCRehearing denied
  PTAB · Jul 18, 2018 · IPR2017-02178 · APJ Christopher M Kaiser · IPR · Rehearing

  The Board denied rehearing, finding no abuse of discretion in denying institution because Medina ’93 did not teach or suggest the required page-by-page binary choice between compression methods.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). We “review [our] decision for an abuse of discretion.” Id. § 42.71(c). In addition, we may not consider an argument made in a request for rehearing unless the request “specifically identif[ies] . . . the place where [that argument] was previously addressed in a motion, an opposition, or a reply.” Id. § 42.71(d). After considering the Request for Rehearing, we determine that Petitioner has not demonstrated that we abused our discretion in denying institution. Accordingly, we deny the Request for Rehearing. slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “persuasive of an abuse of discretion in failing to institute inter partes review. Under this argument, Petitioner adopts our construction of claim 1 and maintains its definition of the page of Medina ’93 as the data block of claim 1. Req. 14. Under the construction we applied in our Institution Decision, claim 1 requires a binary choice between compressing a given data block using the single data compression encoder and compressing that data block using the one or more content-dependent data compression encoders. Dec. 11–13. Thus, Petitioner must show that Medina ’93 teaches or suggests a binary choice between two types of compression to be applied on a page-by-page basis. Even if Petitioner is correct that it is possible, under the right circumstances, for the system of Medina ’93 to operate in a way that results in compressing an entire page of text or in compressing an entire page of non-text data, Medina ’93 does not teach or suggest the required binary choice between those two outcomes, because its system is capable of compressing portions of a page using one method and other portions of the same page using a different method. Ex. 1004, 5:16–60, Fig. 4. Thus, we are not persuaded that Petitioner has shown that we abused our discretion by denying institution of inter partes review on the ground of obviousness over Medina ’93.” slip op. at 5

  § 103 obviousness
  Patents in suitUS 9,054,728
• Laird Technologies, Inc. v. Parker Intangibles LLC And Parker-Hannifin Corp.Rehearing granted
  PTAB · May 21, 2018 · IPR2018-00049 · APJ George C Best · IPR · Rehearing

  The Board denied Parker’s rehearing request, granted institution on every ground in Laird’s petition under SAS, and denied Laird’s rehearing request as moot.

  RulingsRehearing decision

  • RehearingRehearing, deniedGranted in part

    “(d) Rehearing. A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d) (2018). To be entitled to relief, the party seeking rehearing must demonstrate that the Board abused its discretion. 37 C.F.R. § 42.71(c) (2018); see also PNY Techs., Inc. v. Phison Elecs. Corp., No. IPR2013-00472, slip op. at 2 (PTAB April 24, 2014) (Paper 16) (available at https://go.usa.gov/xQUuS). A decision based on an erroneous interpretation of law, a factual finding that is not supported by substantial evidence, or an unreasonable judgment in weighing relevant factors may represent an abuse of discretion. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 3

  • Other 314aInstitution denied discretionary otherDenied

    “of an IPR. Wi-Fi One LLC v. Broadcom Corp., 878 F.3d 1364, 1372 (Fed. Cir. 2018) (holding that § 314(a) “grants the Director discretion not to institute even when the threshold is met.”). The Director has delegated this discretion to the PTAB. 37 C.F.R. § 42.4(a). The Board has identified a nonexhaustive list of factors to be considered in deciding whether or not to refuse to institute an IPR in the context of evaluating follow-on petitions. Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, Case IPR 2016-01357, slip op. at 16 (PTAB September 6, 2017) (Paper 19) (precedential in relevant part) (available at https://go.usa.gov/xQUvu). For the purpose of this decision, we assume without deciding that at least two of these factors also are relevant to our decision regarding whether or not to institute an IPR that does not involve a follow-on petition—for example, whether to institute an IPR with respect to all 15 grounds of alleged unpatentability set forth in Laird’s Petition even though we have determined that Laird has not established a reasonable likelihood of success with respect to 13 of those 15 grounds. These factors are (6) the finite resources of the Board and (7) the Board’s statutory obligation to issue a final written decision not later than one year after the IPR institution date. See id. (factors 6 and 7).” slip op. at 6

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

    “opinion in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018). In that decision, the Supreme Court held that in an instituted IPR, we must issue a final written decision addressing each patent claim challenged by the petitioner. SAS, 138 S. Ct. at 1354.” slip op. at 5

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “stability of Nguyen’s soft gel material because Nguyen does not describe the physical properties of this soft gel. Paper 13, 3–4. This argument is not persuasive because Nguyen describes the soft gel material as “a colloid in which the disperse phase has combined with the continuous phase to form a viscous ‘jelly-like’ product.” Ex. 1008, col. 3, ll. 6–8. Nguyen further states that the degree of cross-linking between the amine resin and the rubber composition and/or between the rubber compounds themselves will determine the consistency of the soft gel, which can range from “liquid-like” to “solid-like.” Id. at col. 4, ll. 18–34. In the absence of evidence to the contrary—and Parker has provided none—this is sufficient support for the opinion provided by Laird’s expert that Nguyen describes a form-stable composition.” slip op. at 4

  Discretionary denial
  Patents in suitUS 7,208,192
• Fujifilm Corporation v. Sony CorporationNo claims unpatentable
  PTAB · May 16, 2018 · IPR2017-00360 · APJ Kristina M Kalan · IPR · Final written decision

  Claims 1–10 were not shown unpatentable: Takahashi and Meguro did not anticipate, and the asserted combinations did not render the claims obvious.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “We note, first, that the specification of the ’501 patent expressly defines the term “biaxially tensilized” as “having been subjected to tensilization in both the machine direction and the crossweb direction.” Ex. 1001, 3:33–35. Petitioner asks us to construe the term “biaxially tensilized” as it is defined in the specification. Pet. 14. Because Patent Owner has acted as its own lexicographer for the term “biaxially tensilized,” we accept the express definition set forth in the specification. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1980).” slip op. at 6

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

    “Applying the broadest reasonable interpretation, we construe the term “tensilized” to mean “stretched.” The specification defines “biaxially tensilized” as “having been subjected to tensilization in both the machine direction and the crossweb direction,” indicating that tensilization has a directional component, i.e., that tensilization can occur in a machine direction, or in a crossweb direction, or both. Ex. 1001, 3:33–35. No other properties such as heating or heat setting are mentioned in the specification’s definition of “biaxially tensilized.” Attempting to substitute the term “heating” or “heat setting” for the term “tensilized” in the definition of “biaxially tensilized” is nonsensical—it does not appear that a substrate could be, for example, “heated” in a machine direction or “heat set” in a crossweb direction. The specification’s paragraph describing “film production,” upon which both parties rely, does not mention tensilization ipsissimis verbis. Ex. 1001, 5:18–31. This paragraph’s description states that film production “typically involves” the steps identified in the paragraph, indicating that not all steps are required at all times. Id. Dictionary evidence indicates that “tensile,” the root word at issue, means “capable of being stretched.” See Ex. 1026, 6. Extrinsic evidence indicates that substrates can be cold-stretched, i.e., stretched without heat. See generally Ex. 1022. Construing “tensilized” to mean “stretched,” in view of broadest reasonable interpretation standards, does not mean that a heating or a heat-setting component must be absent, but allows for the presence of other steps without requiring them to be part of the construction. Thus, we construe the term “tensilized” to mean “stretched.” B. Level of Ordinary Skill in the Art” slip op. at 6

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

    “tensilized,” “longitudinal direction” and “crossweb direction,” “degrees,” and “ferromagnetic pigment.” Pet. 14–16. For purposes of our Institution Decision, we determined that no claim term required express construction. Dec. 5. Patent Owner, in its Response, proposes that we construe the preamble and the term “tensilized.” PO Resp. 7–10. For purposes of this Decision, we determine that the terms “longitudinal direction” and “crossweb direction,” “degrees,” and “ferromagnetic pigment” are not in controversy, and require no express construction. We discuss, here, the terms “biaxially tensilized” and “tensilized.” slip op. at 5

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “undisputed contention that a person of ordinary skill in the art would have been a person with (1) a bachelor’s degree in materials science, physics, electrical engineering, mechanical engineering, chemistry, or a closely related field, and at least five years of experience in the field of magnetic recording or (2) a master’s degree or higher in those fields, or a closely related field, with an emphasis in magnetic recording, and at least three years of experience in the field of magnetic recording. Pet. 13. Patent Owner does not, in its Response, appear to dispute this definition. In light of the evidence before us, we adopt Petitioner’s definition of one of ordinary skill in the art. We also find that Petitioner’s proposed level of skill in the art is reflected by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown.’”); In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). C. Overview of the Asserted References” slip op. at 7

  Patent outcomesUS 6,979,501 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,979,501
• Changer & Dresser, Inc. v. 002152706 Ontario LimitedNo claims unpatentable
  PTAB · May 9, 2018 · IPR2017-00341 · APJ Christopher M Kaiser · IPR · Final written decision

  Petitioner did not prove claims 1, 17, or 35 unpatentable on any asserted ground, primarily because the grounds failed to establish the required access position or motivation to combine.

  RulingsFinal written decision

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “We agree that the Second and Fourth Examples of Takaba differ structurally. In the Second Example, “[t]he spiral spring 62 biases and rotates the cylinder 61 clockwise.” Ex. 1011 ¶ 29; see also id. ¶ 38 (“in Example 2, the cylinder 61 is rotated in a state storing the tip 18”). In the Fourth Example, spring 62 is present, but “the cylinder itself does not rotate.” Id. ¶ 38. But we disagree with Petitioner that Dr. Wagoner’s testimony relates solely to the Fourth Example. Although the first sentence of paragraph 66 of Dr. Wagoner’s testimony refers to the Fourth Example, the remainder of the paragraph relates to the function of spring 62 in both the Second and Fourth Examples of Takaba. Paragraph 66 cites paragraph 31 of Takaba, which relates to Takaba’s Second Example. In addition, paragraph 67 of Dr. Wagoner’s declaration begins “Returning to other aspects of the Second Example . . . .” Ex. 2002 ¶ 67 (emphasis added). This strongly suggests that paragraph 66 was discussing the Second Example, at least in part. Regarding the Second Example, Wagoner also testifies that “spiral spring 62 also securely holds electrode tips 18 within supply cylinder 61 in alignment” and that spiral spring 62 holds tips 18 in alignment with each ‘tip 18 . . . pressed against an inner circumferential surface of the cylinder 61 due [to] a pressing force in the outer circumferential direction of the spiral spring 62.’” Id. ¶ 58; see also id. ¶ 64 (discussing spring 62 in both Examples and identifying differences between the two Examples, none of which pertains to how spring 62 holds tips in alignment). Because Dr. Wagoner’s testimony relates to both the Second and Fourth Examples of Takaba, Ex. 2002 ¶ 66, we agree with Patent Owner that Dr. Wagoner’s testimony addresses Petitioner’s proposed combination of Takaba and Lilley and supports Patent Owner’s position that Petitioner fails to show sufficiently a reason to combine these references. As described above, even without Dr. Wagoner’s testimony, the evidence is only equivocal on the question of whether the spring-driven magazine described in the Second Example of Takaba would experience the same problems as a gravity-fed magazine. The evidence to support Petitioner’s view—Mr. Mangold’s Declaration—is contradicted by the evidence against such a view—Dr. Derby’s deposition testimony. Compare Ex. 1002 ¶ 88 (testifying that a person of ordinary skill in the art would understand that Takaba’s “welding tips 18 still have some space to move within the cylinder 61”), with Ex. 2004, 27:22–28:12 (testifying that paragraph 29 of Takaba, which refers to Takaba’s Second Example, teaches keeping tips 18 “all in contact one next to the other with no gaps or space”). In view of Dr. Wagoner’s testimony, Ex. 2002 ¶¶ 54–66, the evidence is not merely equivocal; the preponderance of the evidence contradicts Petitioner’s position that Takaba’s welding tips are subject to the same problems as tips in a gravity-fed magazine. Because Petitioner’s argument for a reason to combine Takaba with Lilley relies on such a finding, Pet. 55–56, we are not persuaded that Petitioner has demonstrated an adequate reason to combine those references. Accordingly, we conclude that Petitioner has not shown that the combination of Takaba and Lilley would have rendered claims 1 and 35 of the ’639 patent obvious.” slip op. at 16

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

    “Pet. 22–36. Anticipation of a claim under 35 U.S.C. § 102 requires proof that each claimed limitation and the claimed arrangement or combination of those limitations is disclosed, inherently or expressly, by a single prior art reference. Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010). Patent Owner argues that several limitations of claims 1 and 35 are not disclosed by Lilley. Prelim. Resp. 35–43. Claim 1 recites a limitation requiring an “access position allowing one of the spot welding caps . . . to be extracted from the cap carrier.” Ex. 1001, 4:65–5:1. Claim 35 similarly recites an “access position for allowing one of the spot welding caps to be extracted from the cap carrier.” Id. at 6:51–52. As noted above, we have construed these limitations as “a position in which one of the spot welding caps can be pulled out from the cap carrier.” Lilley, however, does not disclose a mechanism in which its pellets are pulled from its magazine. Ex. 1009, 6:63–68, Fig. 8 (“a hollow combination probe and transfer port . . . has passed through magazine 57 and pushed the pellet 61 into the barrel”). Petitioner also does not show that a person of ordinary skill in the art would understand Lilley’s disclosure to include an access position in which a pellet could be pulled from the magazine. Pet. 31–34. In fact, Petitioner acknowledges that Lilley discloses only removing a pellet by pushing it out of the pellet carrier. Pet. 33 (“just like the shaft of the pincer spot welding head of the ‘639 Patent that extracts the welding cap in the axial direction, the probe 64 [of Lilley] engages the pellet 61 in an axial direction to push the pellet 61 out of the magazine 57” (emphasis added)). Accordingly, Petitioner has not shown that Lilley discloses the recited “access position allowing one of the spot welding caps . . . to be extracted from the cap carrier” (claim 1) or “access position for allowing one of the spot welding caps to be extracted from the cap carrier” (claim 35). We determine that Petitioner has not established by a preponderance of the evidence the anticipation of claims 1 and 35 by Lilley.” slip op. at 24

  • ExcludeOther

    “I. Patent Owner’s Motion to Exclude Patent Owner filed a Motion to Exclude Evidence. Paper 25. The motion seeks to exclude paragraphs 34, 47–49, 51, 53–60, 68–69, 71, 74, 83, and 87–89 of Exhibit 1002, Mr. Mangold’s opening declaration. Id. at 9. As discussed above, even without excluding this evidence from the record, we conclude that Petitioner has not demonstrated the unpatentability of any of the challenged claims. Accordingly, even were we to grant Patent Owner’s motion, it would not change the outcome of this proceeding. Therefore, we dismiss Patent Owner’s Motion to Exclude Evidence as moot.” slip op. at 28

  Patent outcomesUS 9,393,639 not shown unpatentable
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 9,393,639

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.