• Ebay, Inc. v. Lexos Media IP, LLCInstituted
  PTAB · Feb 23, 2024 · IPR2024-00337 · APJ Sharon Fenick · IPR · Institution

  The Board instituted IPR on claims 1, 38, and 53 on all petitioned grounds and joined eBay to IPR2023-01001, subject to participation limits.

  RulingsInstitution decision

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

    “partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). Under 35 U.S.C. § 314(a), an inter partes review may not be authorized unless the information in the Petition and any preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to the challenged claims of the ’449 patent on all grounds of unpatentability presented. We also grant Petitioner’s Motion.” slip op. at 3

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “Patent Owner argues that Petitioner is time-barred from seeking inter partes review of the ’449 patent and is “improperly using the joinder procedure in an attempt to circumvent” the one-year time bar set forth in 35 U.S.C. § 315(b). Opp. 1, 7–8. However, Patent Owner does not persuasively explain, and we do not discern, how filing a petition with a request for joinder properly under 37 C.F.R. § 42.122(b) is an improper use of the joinder procedure to circumvent the one-year time bar. 37 C.F.R. § 42.122(b) (providing that joinder must be filed no later than one month after the institution date of the inter partes review for which joinder is requested and that the one-year time bar (§ 42.101(b)) “shall not apply when the petition is accompanied by a request for joinder.”)” slip op. at 13

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “whether to ‘join as a party’ the joinder applicant,” who is the Petitioner in this proceeding. Id. Petitioner timely filed its Motion for Joinder on December 20, 2023 (i.e., within one month after the institution of the 01001 IPR on December 12, 2023). See Mot.; 01001 IPR, Paper 9; 37 C.F.R. § 42.122(b). As moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). In deciding whether to join a case, we consider (1) the reasons why joinder is appropriate, (2) whether the petition raises any new grounds of unpatentability, (3) any impact that joinder would have on the cost and trial schedule for the existing review, and (4) whether joinder will add to the complexity of briefing or discovery. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15, 4 (PTAB Apr. 24, 2013); Patent Trial and Appeal Board, Consolidated Trial Practice Guide, 76 (Nov. 2019), https://www.uspto.gov/sites/default/files/ documents/tpgnov.pdf.” slip op. at 11

  None
  Patents in suitUS 6,118,449
• Ebay, Inc. v. Lexos Media IP, LLCInstituted
  PTAB · Feb 23, 2024 · IPR2024-00336 · APJ Sharon Fenick · IPR · Institution

  The Board instituted IPR on claim 72 under all three asserted obviousness grounds and granted eBay’s motion to join IPR2023-01000.

  RulingsInstitution decision

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

    “partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). Under 35 U.S.C. § 314(a), an inter partes review may not be authorized unless the information in the Petition and any preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to the challenged claims of the ’102 patent on all grounds of unpatentability presented. We also grant Petitioner’s Motion.” slip op. at 3

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

    “Owner argues that Nielsen relies on the HTML protocol and modifications would require changes to the HTML protocol to provide tooltips that appear as part of a cursor, but that Petitioner did not adequately address the real possibility of such a change. PO Prelim. Resp. 22–24. Patent Owner additionally argues that there would not have been a motivation to make changes to Nielsen, because, in Nielsen, the tooltip is not “indiscriminately and automatically displayed in response to cursor movement” but rather is displayed only after cessation of movement over a part of the display with an associated tooltip. Id. at 24 (emphasis removed). These arguments are similar to those made in the preliminary response in the 01000 IPR. See 01000 IPR, Paper 8, 57–59. In the institution decision in the 01000 IPR, we did not determine whether a likelihood of success had been shown for the Nielsen and Malamud ground, but provided initial views for the benefit of the parties, which are applicable in this proceeding as well. 01000 IPR, Paper 10, 33–35. As discussed above, we have made the decision to institute on other grounds, and we note that our institution is necessarily on all grounds in the Petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); 37 C.F.R. § 42.108(a) (“When instituting ... review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 9

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “Patent Owner argues that Petitioner is time-barred from seeking inter partes review of the ’102 patent and is “improperly using the joinder procedure in an attempt to circumvent” the one-year time bar set forth in 35 U.S.C. § 315(b). Opp. 1, 7–8. However, Patent Owner does not persuasively explain, and we do not discern, how filing a petition with a request for joinder properly under 37 C.F.R. § 42.122(b) is an improper use of the joinder procedure to circumvent the one-year time bar. 37 C.F.R. § 42.122(b) (providing that joinder must be filed no later than one month after the institution date of the inter partes review for which joinder is requested and that the one-year time bar (§ 42.101(b)) “shall not apply when the petition is accompanied by a request for joinder.”)” slip op. at 12

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “whether to ‘join as a party’ the joinder applicant,” who is the Petitioner in this proceeding. Id. Petitioner timely filed its Motion for Joinder on December 20, 2023 (i.e., within one month after the institution of the 01000 IPR on December 12, 2023). See Mot.; 01000 IPR, Paper 9; 37 C.F.R. § 42.122(b). As moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). In deciding whether to join a case, we consider (1) the reasons why joinder is appropriate, (2) whether the petition raises any new grounds of unpatentability, (3) any impact that joinder would have on the cost and trial schedule for the existing review, and (4) whether joinder will add to the complexity of briefing or discovery. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15,4 (PTAB Apr. 24, 2013); Patent Trial and Appeal Board, Consolidated Trial Practice Guide, 76 (Nov. 2019), https://www.uspto.gov/sites/default/files/ documents/tpgnov.pdf. The Petition (1) is substantially identical to the 01000 IPR petition, (2) contains the same grounds based on the same evidence, and (3) relies on the same declaration of Dr. Craig Rosenberg. (Ex. 1003). Mot. 1, 6–9 & n.1. Petitioner represents that joinder will not impact the 01000 IPR schedule. Id. at 4; Reply 5. Petitioner also represents that it “will accept an “understudy” role unless and until [the 01000 petitioner] is terminated from the proceeding.” Mot. 4, 9–10. Petitioner represents that in its understudy role, it agrees that the following conditions will apply: (a) all filings by Petitioner in the joined proceeding be consolidated with the filings of the petitioner in the 01000 IPR, unless a filing solely concerns issues that do not involve the petitioner in the 01000 IPR; (b) Petitioner shall not be permitted” slip op. at 11

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 5,995,102
• Amazon.Com, Inc. v. Lexos Media IP, LLCInstituted
  PTAB · Dec 12, 2023 · IPR2023-01001 · APJ Sharon Fenick · IPR · Institution

  The Board instituted IPR on claims 1, 38, and 53 on all asserted grounds, finding a reasonable likelihood of unpatentability over Malamud and Malamud with Nakagawa.

  RulingsInstitution decision

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

    “partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to claims 1, 38, and 53 of the ’449 patent on all grounds of unpatentability presented.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “The Fintiv Memorandum states that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Fintiv Memorandum, 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A) (“Sotera”)); see id. at 7–9. The Fintiv Memorandum explains that such a stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB.” Id. at 7. Here, Petitioner provides a Sotera stipulation. Pet. 63. Specifically, Petitioner stipulates that if we institute review, “Petitioner will not pursue the grounds raised, or that reasonably could have been raised, in this IPR.” Id. (referencing Sotera).” slip op. at 11

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). We apply a two-part test when evaluating whether to exercise discretion under § 325(d). See Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (Feb. 13, 2020) (precedential) (“Advanced Bionics”). Specifically, we consider: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person of ordinary skill in the art (“POSITA”) at the claimed priority date would have had experience in the fields of human factors engineering or human computer interaction. The POSITA would have at least a bachelor’s degree in computer science, computer engineering, human factors engineering, or a related field and would have had at least two years of relevant work experience in the fields of UI design, or equivalent experience. Pet. 7 (citing Ex. 1003 ¶¶ 31–35). At this time, Patent Owner does not contest Petitioner’s proposed definition for one of ordinary skill in the art. Prelim. Resp. 28; see Ex. 2001 ¶ 29. For the purposes of this Decision, we adopt Petitioner’s formulation for the level of skill of one of ordinary skill in the art, which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’449 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art)” slip op. at 18

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 6,118,449
• Amazon.Com, Inc. v. Lexos Media IP, LLCInstituted
  PTAB · Dec 12, 2023 · IPR2023-01000 · APJ Sharon Fenick · IPR · Institution

  The Board instituted inter partes review of claim 72 on all three obviousness grounds: Malamud; Malamud with Nakagawa; and Nielsen with Malamud.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “The Fintiv Memorandum states that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably 2 Available at https://www.uspto.gov/sites/default/files/documents/interim_ proc_discretionary_denials_aia_parallel_district_court_litigation_memo_20 220621_.pdf. been raised before the PTAB.” Fintiv Memorandum, 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A) (“Sotera”)); see id. at 7–9. The Fintiv Memorandum explains that such a stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB.” Id. at 7.” slip op. at 7

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “However, as Petitioner correctly asserts, the arguments made in the 1749 IPR were markedly different from the arguments presented in this proceeding with respect to whether and how Malamud teaches “specified content information.”. Pet. 55–56. The 1749 IPR petitioner relied on information in Malamud’s transmitted message that “tells the operating system what type of cursor to display and sets forth the contents and type of information to be displayed in the cursor” (Ex. 1004, 5:49–52) for teaching the “specified content information includ[ing] information that is to be displayed on said display of said user’s terminal” (limitation c.i.2) in claim 72. 1749 IPR, Paper 21 (1744 IPR final written decision), 17. This led to a deficiency in the petition’s showing for the recitation (limitation c.ii of claim 72) that the cursor image is modified “responsive to movement of said cursor image over a display of said at least a portion of said information to be displayed on said display of said user’s terminal.” Id. at 17–19, 24–26. It was this argument in the 1749 IPR that was found to be fatal to arguments of unpatentability regarding claim 72 of the ’102 patent and an additional claim at issue in that proceeding. Id. at 25–26 (“Petitioner has not adequately demonstrated how Malamud . . . teaches or suggests this limitation because it has failed to explain how Malamud’s cursor image could exhibit movement over itself.”). Here, however, Petitioner does not rely on Malamud’s transmitted message as including the “specified content information” of limitation c.i.2 as the petition in the 1749 IPR did; rather, Petitioner here relies on the application program in Malamud as including this information. Pet. 34, 37; see infra at § II.E.2. We consider, therefore, with respect to Becton, Dickinson factor (d), this is a significant area in which there is no overlap between the arguments previously made, which were dispositive in the 1749 IPR, and the manner in which Petitioner in this proceeding relies on Malamud. Even though Malamud was before the Board in the 1749 IPR, the arguments presented in the Petition here were not previously considered by the Office.” slip op. at 10

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

    “partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to the challenged claim of the ’102 patent on all grounds of unpatentability presented.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person of ordinary skill in the art (“POSITA”) at the claimed priority date would have had experience in the fields of human factors engineering or human computer interaction. The POSITA would have at least a bachelor’s degree in computer science, computer engineering, human factors engineering, or a related field and would have had at least two years of relevant work experience in the fields of UI design, or equivalent experience. 3 The present record contains no evidence or argument relating to secondary considerations. Pet. 7–8 (citing Ex. 1003 ¶¶ 31–35). At this time, Patent Owner does not contest Petitioner’s proposed definition for one of ordinary skill in the art. Prelim. Resp. 28; see Ex. 2001 ¶ 29. For the purposes of this Decision, we adopt Petitioner’s formulation for the level of skill of one of ordinary skill in the art, which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’102 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 14

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 5,995,102
• Nintendo Co., Ltd. / Nintendo Of America Inc. v. Polaris Powerled Technologies, LLCInstituted
  PTAB · Oct 18, 2023 · IPR2023-00778 · APJ Kara L Szpondowski · IPR · Institution

  The Board instituted IPR on claims 1, 2, 7, 9, 15, and 16 and all asserted grounds, finding a reasonable likelihood that at least one claim is unpatentable.

  RulingsInstitution decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends a person of ordinary skill in the art “would have possessed at least a bachelor’s degree in electrical engineering, physics, optics or a related field, and approximately three years of experience in the fields of visual displays, circuit design, and related technologies.” Pet. 7 (citing Ex. 1002 ¶¶ 23–25). Petitioner states that the Board adopted this formulation in IPR2020-01289, Paper 9, 8–9 (PTAB Mar. 9, 2021). Id. Petitioner also asserts that “[o]ther formulations are also possible but, even if adopted, they would not materially change the analysis or the outcome.” Id. At this stage of the proceeding, Patent Owner “applies Petitioner’s level of ordinary skill without agreeing to it.” Prelim. Resp. 1. We find Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the prior art of record, and, therefore, adopt Petitioner’s proposed level of ordinary skill in the art for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

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

    “At this stage of the proceeding, only terms that are in controversy need to be construed, and then only to the extent necessary to determine whether to institute inter partes review. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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))). After reviewing the parties’ arguments and evidence, we determine that we do not need to expressly construe any term for purposes of this Decision.” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “On the current record, we find that, for purposes of institution, Petitioner has sufficiently shown that the combination of Gettemy, Kerman, Rosenzweig, Whitted, and Bell teach this limitation and has provided sufficient rationale to combine the references. First, we credit Dr. Baker’s testimony that “notwithstanding that the system in Gettemy will not permit the user to set the slider below the lower end of the displayed range . . . nothing in Gettemy states that the purpose of summation of the minimum value of the brightness range is to ensure that the final display brightness value used to control the brightness of the display meets a predetermined desired level of brightness.” Ex. 1002 ¶ 324. Thus, Petitioner relies on Whitted and Bell to teach this limitation. As for Patent Owner’s arguments that Whitted and Bell provide “redundant” functionality, we disagree on the current record. Petitioner explains the benefits of adding the functionality from Whitted and Bell as a backstop and to compensate for degradation of conventional displays. Pet. 71–72. Moreover, Dr. Baker provides supporting testimony and citations to additional references in support of Petitioner’s motivation to combine the references, and, accordingly, we disagree with Patent Owner that there is no evidence to support Petitioner’s 15 Patent Owner argues that the Board’s decision in IPR2018-01262 is instructive. Prelim. Resp. 69. We disagree. That decision described several deficiencies in the Petition relating to the “dark level bias” limitation (see IPR2018-01262, Paper 14, 12–16), and Patent Owner oversimplifies the Board’s findings by quoting from one paragraph in the decision. contentions. See Ex. 1002 ¶ 336 (citing Ex. 1019, 1020, 1021). In addition, Patent Owner’s arguments that Whitted and Bell do not disclose the “dark level bias” address Whitted and Bell individually, rather than on the combination as proposed by Petitioner, with Gettemy, Kerman, and Rosenzweig, and are therefore not persuasive on this record. The parties may wish to further develop the record as to the foregoing issues during trial.” slip op. at 32

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

    “Petitioner has sufficiently shown that Gettemy, Kerman, and Rosenzweig teach this limitation and has provided sufficient rationale to combine the references. Petitioner’s arguments that sliders were “commonly used” is supported by the disclosure in both Kerman and Rosenzweig. Ex. 1014, 39 (Kerman describing that a slider is “a popular user interface”); Ex. 1015, 44 (Rosenzweig describing a slider as “a familiar user interface element used in all major software programs”). Petitioner relies on Kerman and Rosenzweig to explicitly explain how Gettemy’s conventional slider is implemented. Pet. 57. Patent Owner’s arguments largely address the references individually, rather than on the combination as proposed by Petitioner, where Kerman and Rosenzweig are relied upon for the underlying technical functionality of Gettemy’s slider. See Soft Gel Techs., Inc. v. Jarrow Formulas, Inc., 864 F.3d 1334, 1341 (Fed. Cir. 2017); In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). We find persuasive Dr. Baker’s testimony that “[a]n ordinarily skilled artisan, seeking to implement the brightness control system of Gettemy, would thus have been motivated to rely on the teachings of Kerman and Rosenzweig to better understand how to implement the slider controls in Gettemy, including the precise formula that produces the exact display brightness values exhibited in Gettemy.” Ex. 1002 ¶ 319. Further, we disagree with Patent Owner that Petitioner and Dr. Baker have made up an equation. The equations relied upon by Petitioner are directly from the Kerman and Rosenzweig references. See Pet. 57, 58, 62–64. Based on our review and consideration of the current record, we determine that, for purposes of institution, Petitioner has sufficiently shown that the combination of Gettemy, Kerman, and Rosenzweig teaches limitation 1(c) and has provided reasons sufficiently supported by factual underpinnings to combine the reference teachings with a reasonable expectation of success.” slip op. at 28

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 8,223,117
• Valve Corporation v. Ironburg Inventions Ltd.Some claims unpatentable
  PTAB · Jan 26, 2023 · IPR2017-01928 · APJ Mitchell G Weatherly · IPR · Remand

  Claims 1, 2, 9, 11–17, and 21–24 are unpatentable over Burns with Uy or AlphaGrip; claim 10 was not shown unpatentable because Burns does not teach detachable paddles.

  RulingsRemand decision

  • RemandOther

    “rendered claims 3–8 and 18–20 unpatentable. Valve, 8 F.4th at 1381. The Federal Circuit reversed our determination that Burns was not prior art. Id. at 1381. The Federal Circuit also vacated our determination that Valve had failed to prove that collectively claims 1, 2, 9–17, and 21–24 were unpatentable as obvious in view of Burns in combination with either Uy or AlphaGrip. Id. Accordingly, the Federal Circuit remanded the case to us to consider Valve’s challenges to the patentability of claims 1, 2, 9–17, and 21–24 of the ’229 patent as obvious based on the combinations of prior art listed in the table below. Claims6 35 U.S.C. § References 1, 2, 9, 10, 14–17, 21–24 103 Burns, Uy 1, 2, 9–17, 21, 22 103 Burns, AlphaGrip Id. C. Remand Background On remand, we authorized the parties to concurrently file an opening brief and then concurrently file responsive reply briefs. Paper 44, 4. The parties agreed, and we concurred, that no new evidence would be submitted during the remand proceeding. Id. at 3. Accordingly, we decide the issues on remand based on the record that was submitted during the original trial.” slip op. at 4

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Valve contends that the ordinarily skilled artisan would have: a bachelor’s degree in an industrial design or engineering field, and approximately two years of relevant experience, for example. Alternatively, the same or an equivalent level of skill in the art could be obtained by end users or hobbyists who have substantial experience modifying or creating customized game controllers that include features to better suit their needs, even without any college education. Pet. 10 (citing Ex. 1009 ¶ 11). Ironburg, without expressly defining the level of ordinary skill, contends that a college degree of the type identified by Valve is not required. See Supp. PO Resp. 4–6. Ironburg notes that the level of ordinary skill is “relatively low” and the technology involved “is simple and straightforward.” Id. at 4 (citing Ex. 2016 ¶ 21). Ironburg’s contentions regarding the level of ordinary skill are consistent with Valve’s position, id. at 6, which we apply in our analysis. D. Whether AlphaGrip Is a Prior Art Printed Publication” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “We find Ironburg’s critique of Mr. Willner’s testimony unavailing. Valve persuasively responds that Mr. Willner testifies that he personally recalls reviewing AlphaGrip on the internet during 2006, which significantly predates the filing of the oldest application in the priority chain of the ’229 patent, May 22, 2013, by at least six years. Compare Ex. 1009 ¶ 3 (testifying that online publication of AlphaGrip happened in 2006), with Ex. 1001, code (60) (identifying provisional application filed May 22, 2013, as earliest-filed priority application). Mr. Willner testifies that he is the inventor and designer of the controller that is reviewed in AlphaGrip, which we find to qualify him as an ordinarily skilled artisan. Ex. 1009 ¶¶ 1–3. Besides expressly testifying that he viewed AlphaGrip online during 2006, Mr. Willner also testifies in some detail about his recollection of his interactions with the author of AlphaGrip, Ryan Paul, and the events surrounding the publication of Mr. Paul’s review on Arstechnica’s website. Id. ¶¶ 4–5. Mr. Willner also reviews the version of AlphaGrip that Valve submitted as prior art and testifies that it is a true and correct copy of the review that he remembers seeing online during 2006. Id. ¶¶ 6–7. We find Mr. Willner’s testimony to be reliable in part because he recalls being “delighted” by the praise Mr. Paul lavished on the AlphaGrip controller. Id. ¶ 8. The publication of AlphaGrip marked an important event for Mr. Willner’s company. Mr. Willner states that he immediately posted a link on his own company’s website to Arstechnica’s AlphaGrip review in 2006, and his company maintains the link to Arstechnica’s review of AlphaGrip “to this day.” Id. We find that all these facts increase the probative value of Mr. Willner’s testimony on the issue of whether AlphaGrip was published and could easily have been found by interested persons during 2006. Although Mr. Willner may not have been a webpage manager for Arstechnica or be able to testify about precisely how many people accessed AlphaGrip in 2006, we find his testimony, as one of skill in the art himself to be compelling. Not only has Ironburg failed to refute any of Mr. Willner’s testimony with countervailing evidence, Ironburg did not cross-examine Mr. Willner to test his memory of the specific events set forth in his testimony. See PO Resp. 16–18 (failing to provide countervailing evidence or cite cross examination testimony).” slip op. at 12

  • ExcludeMotion to exclude, deniedMixed

    “We also disagree with Ironburg that we should exclude as hearsay or irrelevant Dr. Rempel’s testimony on how flexible the Burns’ paddles were or the extensive body of objective evidence cited and relied upon by him to support his testimony.9 Mot. 12–13. To the contrary, we agree with Valve that Dr. Rempel may properly rely upon the cited exhibits even if they would otherwise be inadmissible hearsay because they constitute the types of information upon which an expert would reasonably rely under Fed. R. Evid. 703. Opp. 10. Accordingly, we deny-in-part the Motion to the extent that it seeks to strike or exclude testimony in Dr. Rempel’s second declaration or Exhibits 1020, 1025, 1026, 1031, 1036, 1042 cited by Dr. Rempel in support of his analysis.” slip op. at 18

  Patent outcomesUS 9,352,229 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,352,229
• Ralph Lauren Corporation v. Lexos Media IP, LLCSome claims unpatentable
  PTAB · Mar 25, 2020 · IPR2018-01755 · APJ Sharon Fenick · IPR · Final written decision

  Claims 27, 33, 40, 41, 72, 81, and 82 are unpatentable under § 103; the remaining challenged claims are not determined unpatentable.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “Decision issues under 35 U.S.C. § 318(a). Having considered the evidence of record, and for the reasons discussed below, Petitioner has demonstrated by a preponderance of the evidence that claims 27, 33, 40, 41, 72, 81 and 82 of the ’449 patent are unpatentable under 35 U.S.C. § 103(a), but has not demonstrated by a preponderance of the evidence that claims 1–3, 5–7, 12– 15, 28, 29, 31, 32, 38, 39, 53–56, 58–63, 73–75, and 77–80 of the ’449 patent are unpatentable.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art would have had “at least a master’s degree in Computer Science, Computer Engineering, or a related field, or hold a bachelor’s degree in Computer 4 The record contains no evidence relating to secondary considerations. Science, Computer Engineering, or equivalent and have at least two years of relevant work experience in the fields of UI [(user interface)] design and OSs.” Pet. 10–11. In the Institution Decision, we preliminary adopted Petitioner’s proposed definition, noting that the prior art in this case demonstrated the level of ordinary skill in the art at the time of the invention. Inst. Dec. 10 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). Patent Owner does not comment on or dispute Petitioner’s proposal, and instead cites Okajima’s holding regarding the level of skill in the prior art without raising any issues regarding whether the prior art here reflects a level of ordinary skill different from that proposed by Petitioner. PO Resp. 10 (citing Okajima, 261 F.3d at 1355). We adopt Petitioner’s definition as consistent with the ’449 patent and the asserted prior art.” slip op. at 10

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

    “Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). The Petitioner proposed construction of several claim terms in the Petition. Pet. 12–18. However, none of these claim terms require construction to resolve the controversy. Petitioner also argued for a construction of an additional term (“wherein said specified content information further comprises information to be displayed on said display of said user’s terminal”) in its Reply. Pet. Reply 13. Patent Owner contends that this argument is a new argument raised improperly for the first time in the Reply. PO Sur-Reply 10–11. We agree. Pursuant to 37 C.F.R. § 42.23(b), a reply “may only respond to arguments raised in the corresponding ... patent owner response.” See also Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 775 (Fed. Cir. 2018) (concluding that the Board did not abuse its discretion in refusing to consider portions of a reply declaration “rais[ing] a new obviousness argument for [a claim] limitation that could have been made in the petition” but was not); Intelligent Bio-Sys., Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359, 1369–1370 (Fed. Cir. 2016) (concluding that the Board did not abuse its discretion in refusing to consider reply brief arguments advocating a “new theory” of unpatentability under 37 C.F.R. § 42.23(b)). Therefore, we will not address the new construction proposed for this claim term.” slip op. at 11

  • Strike new argumentNew argument disregardedDecided for patent owner

    “A petitioner must choose which grounds of invalidity to assert in the petition and “the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute.” Intelligent Bio- Sys., 821 F.3d at 1369 (Fed. Cir. 2016); Wasica Fin. GmbH v. Cont'l Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Circ. 2017) (a petitioner is foreclosed from “shifting” in post-petition arguments to a new theory of prima facie obviousness based on a different passage of a prior art reference than was used in the petition); see PTAB Consolidated Trial Practice Guide November 2019,5 73 (“Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie 5 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated case of unpatentability.”); Trial Practice Guide Update August 2018,6 14 (same). Therefore, we evaluate Petitioner’s arguments with respect to limitation [c.i] relying upon Malamud’s message relating to a preview cursor in Malamud to teach the “specified content information.” Patent Owner does not make any arguments relating to whether Malamud’s message, in view of the teachings of Anthias, teaches limitation [c.i] of claim 1. See, e.g., PO Resp. 9–18.” slip op. at 19

  Patent outcomesUS 6,118,449 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,118,449
• Maxlinear, Inc. v. Cresta Technology Corp. And CF Crespe LLCSome claims unpatentable
  PTAB · Apr 17, 2019 · IPR2015-00592 · APJ Patrick M Boucher · IPR · Remand

  Claims 1–3, 5, and 10–20 are unpatentable by collateral estoppel; claims 4, 6–9, and 21 were not shown unpatentable because the combination rationale was insufficient.

  RulingsRemand decision

  • RemandOther

    “After this proceeding was remanded by the Federal Circuit, we invited the parties to address a proposed procedure that would include additional briefing regarding the impact of the prior holdings that claims 1–3, 5, and 10–20 are unpatentable, and the parties filed their respective proposals. Papers 78–80. In its proposal, Petitioner suggested that Patent Owner “has waived the right to address the patentability of claims 4, 8, and 9” because “Patent Owner never separately argued for the patentability of these claims.” Paper 79, 1; see MaxLinear, 880 F.3d at 1378 n.4 (“On remand, the Board may consider whether CRESPE has waived arguments concerning these claims.”). But those claims were not challenged in the earlier proceedings that held claims 1–3, 5, and 10–20 unpatentable. Rather, those claims were only challenged in this proceeding with respect to art that was not at issue in the earlier proceedings. In advancing its contention, Petitioner effectively makes the untenable argument that Patent Owner must provide separate reasons for the patentability of claims 4, 8, and 9, even when we determine that its own case-in-chief for those claims is insufficient. In addition, Petitioner’s proposal requests briefing on the issues of “whether claims 6, 7 and 20 materially alter the [unpatentability] analysis on which the prior [unpatentability] determinations rested.” Id. We have considered, and deny, that request. The Federal Circuit’s remand order noted that the fact that “MaxLinear was not a party to the other IPRs is . . . irrelevant since Cresta, the predecessor in interest to CRESPE, was party to the original determination.” MaxLinear, 880 F.3d at 1377. But the Federal Circuit’s order does not state or suggest that the fact that different prior art was considered in the earlier proceedings is similarly irrelevant. Indeed, we agree with Patent Owner that “[t]he Federal Circuit has not ordered the Board and the parties to start over from scratch, and certainly not with new prior art.” Paper 80, 3; see Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015) (“The Board may control its own proceedings, consistent with its governing statutes, regulations, and practice.”). Patent Owner is correct that “[a]llowing new prior art to be considered on remand after the Final Decision on the merits would essentially be starting a new IPR proceeding.” Paper 80, 9. As Patent Owner asserts, “[t]he parties and the Board would have to argue and consider new grounds, new expert testimony would have to be taken and presented, and a new Final Decision would have to be rendered.” Id. The Federal Circuit’s instruction is limited: “We remand this case to the Board so that it may consider the patentability of the surviving disputed dependent claims 4, 6-9, and 21.” MaxLinear, 880 F.3d at 1378. We have complied with this instruction in two ways: first, by applying the Federal Circuit’s instruction regarding the collateral-estoppel impact on challenged claims 1–3, 5, and 10–20; and, second, by clarifying that Petitioner’s argument regarding the combination of Van De Plassche and Ishikawa compels a conclusion that Petitioner’s showing is insufficient with respect to claims 4, 6–9, and 21, independent of any conclusion previously reached with respect to independent claims 1 and 17. While the Federal Circuit includes language in its remand order that might be construed as suggesting applying different prior art in the latter analysis, 880 F.3d at 1377, the scope of this proceeding is limited by the prior art and the arguments in the Petition here. SAS Institute, 138 S. Ct. at 1356 (“in an inter partes review the petitioner is master of its complaint”); see Paper 80, 8 (Patent Owner addressing potential ambiguity of Federal Circuit’s instruction).” slip op. at 35

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Experience is but one of several factors that may be considered when determining the level of ordinary skill in the art. See, e.g., In re GPAC, 57 F.3d 1573, 1579 (Fed. Cir. 1995) (identifying factors as including the “type of problems encountered in the art,” “prior art solutions to those problems,” “rapidity with which innovations are made,” “sophistication of the technology,” and “educational level of active workers in the field”). “In a given case, every factor may not be present, and one or more factors may predominate.” Id. Patent Owner’s distinction relates to a portion of one factor (education) in a determination that involves several factors. The significance of the level of ordinary skill in the art is the role it plays in an obviousness analysis. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry”). Patent Owner does not explain persuasively how the alleged omission by Petitioner impacts the obviousness analysis. We conclude that Petitioner’s proposed definition, which is consistent with the level of skill generally reflected by the prior art of record, reflects an appropriate skill level. See Okajima, 261 F.3d at 1355.” slip op. at 11

  • ExcludeMotion to exclude, deniedDenied

    “Importantly, we find that Patent Owner did not exhaust avenues available to it in attempting to secure answers to its questions from Dr. Hashemi. The line of questioning involving Exhibit 2008 occurred late in the day, “well after the close of business on the east coast,” and an attempt by the parties to telephone the Board during the deposition was unsuccessful. See Opp. 3; Ex. 2006, 154:24–155:4. The parties discussed contacting the Board the following day, and continuing the deposition the day after that, when Petitioner would make Dr. Hashemi available for further cross-examination after receiving guidance from the Board. Ex. 2006, 155:5–157:13. Rather than proceed in this fashion, Patent Owner decided to abandon the line of questioning and passed the witness for redirect: “I think after we talked about it a bit, I think we will withdraw our questions on this document and just move on to redirect.” Id. at 157: 22–25 (emphasis added). Dr. Hashemi could have answered the questions and sought a protective order that would insulate his answers from the public record, providing the Board with the information needed to perform a focused evaluation of the credibility and reliability of specific statements in his testimony. But a significant measure of responsibility for whether Dr. Hashemi’s testimony is tainted with bias lies with Patent Owner for declining to pursue the issue to a point of greater clarification. Indeed, we are limited in how strongly we can fault Petitioner for failing to submit a clarifying declaration from Dr. Hashemi, in light of Patent Owner’s decision to “withdraw” the questions at issue. Because the evidence is insufficiently developed, we are similarly limited in the degree to which we can draw adverse inferences from Dr. Hashemi’s refusal to answer questions, and unable to conclude, by a preponderance of the evidence, that Dr. Hashemi’s testimony is tainted by an undisclosed bias. Accordingly, we deny Patent Owner’s Motion to Exclude.” slip op. at 16

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Not reached

    “C. Petitioner’s Motion to File Supplemental Information Pursuant to our authorization, Petitioner filed a Motion for Leave to File Exhibits 1213–17 as Supplemental Information, which Patent Owner opposes. Papers 83, 86. The Motion asserts that such information is “relevant to the issues in the case, specifically the lack of nexus between any purported secondary consideration, including surprising or unexpected results.” Paper 83, 1. We do not reach Patent Owner’s arguments regarding secondary considerations because we conclude that Petitioner’s case-in-chief is insufficient. Accordingly, we dismiss the Motion as moot.” slip op. at 17

  Patent outcomesUS 7,075,585 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,075,585
• Infobionic, Inc. v. Braemar Manufacturing, LLCAll claims unpatentable
  PTAB · Jul 27, 2018 · IPR2017-00796 · APJ Michael L Woods · IPR · Final written decision

  Claims 1–9 and 11–26 are unpatentable: claims 1–6, 9, 11–14, 16–20, 22, 24, and 26 as obvious over Ferguson and Kehr; claims 7, 15, 21, 23, and 25 over Ferguson, Kehr, and Yasushi; claim 8 …

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on our review of the ’767 patent, the types of problems and solutions described in the ’767 patent and applied prior art, and the testimony of Dr. Stone and Dr. Fernald, we adopt Petitioner’s asserted level of ordinary skill and find that a POSITA at the time of the alleged invention would have at least a bachelor’s degree in a suitable engineering field (e.g., mechanical or electrical), or equivalent proficiency, and at least two to three years of experience in the research and/or development of remote patient monitoring systems, such as cardiac remote patient monitoring systems, where more education may substitute for relevant experience and vice versa. Stone Decl. ¶¶ 13-14. This education and experience would include a solid familiarity with the communication between components of a patient monitoring system. Pet. 6–7 (citing Ex. 1002 ¶¶ 13–14). We also agree with Patent Owner that any differences in the parties’ proposed level of ordinary skill does not impact our analysis. See PO Resp. 8.” slip op. at 11

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

    “Petitioner does not rely on Ferguson’s base station for being both battery-powered and “plugged in,” or having both a landline connection and a cellular connection, as Patent Owner’s argument presumes (Pet. 15–18), nor does Petitioner’s proposed modification require the combined system to disclose such structure (see id.). Furthermore, claim 1 does not require the claimed communications device to be both battery powered and plugged into a wall, or have both a landline and wireless connection. Ex. 1001, 7:2–36. Even if Ferguson only uses a single cellular connection for data transfer (Ex. 1004, 5:30–33 (“[f]or data transfer, the base station connects the memory card or smart card, via modem and land or cellular telephone line”)), we find persuasive Dr. Stone’s testimony that a POSITA would have been motivated to delay routine, non-urgent communications, to avoid tying up that cellular line (see Ex. 1002 ¶¶ 111–114). We credit Dr. Stone’s testimony that “incorporating the transmission timing scheme of Kehr into the system of Ferguson would have been routine for one of ordinary skill and desirable for promoting resource efficiency.” Ex. 1002 ¶ 114. In particular, we find persuasive Dr. Stone’s testimony that modifying Ferguson would “strike an appropriate balance of ensuring patient safety (e.g., by requiring immediate transmission of urgent data) while avoiding the use of power and cellular bandwidth resources (e.g., by allowing later transmission of non-urgent data).” Id. (emphasis added).” slip op. at 29

  • ExcludeMotion to exclude, deniedDenied

    “We agree with Petitioner. First, we agree with Petitioner that Patent Owner has not met its burden of explaining why these exhibits must be excluded as hearsay. Id. at 1. Here, Patent Owner refers to the exhibits as a whole and does not state precisely what aspect of these 18 exhibits are hearsay. See Paper 25, 1– 2. Further, Patent Owner’s argument challenges the sufficiency of the evidence in arguing that “nothing in these [exhibits] states that they are describing pricing for analog-only cellular plans . . . [or] states that users can use free nighttime and weekend minutes for data usage.” Id. at 1. By asserting that “nothing in” the exhibits support Dr. Stone’s testimony, Patent Owner’s argument is a criticism of Dr. Stone’s testimony and instead focuses on the weight that we should give to the exhibits—and its related testimony—rather than to the exhibits’ admissibility as hearsay. See Paper 29, 4 (“[s]uch arguments go the exhibits’ weight, not their admissibility”). Thus, it is not a proper basis for a motion to exclude. Second, we agree with Petitioner that even if the exhibits are hearsay, the exhibits would be admissible under FRE 807. Paper 29, 3–4. To qualify for the residual exception under FRE 807, four requirements must be met: (1) the statement has equivalent circumstantial guarantees of trustworthiness; (2) it is offered as evidence of a material fact; (3) it is more probative on the point for which it is offered than any other evidence that the proponent can obtain through reasonable efforts; and (4) admitting it will best serve the purposes of these rules and the interests of justice. FRE 807. Petitioner argues persuasively that the four requirements are met. See Paper 29, 3–4. Regarding (1), circumstantial guarantees of trustworthiness, Petitioner points out that there “is no dispute regarding their authenticity and both parties and their experts relied on such Internet Archive Captures.” Id. at 3. Regarding (2), Petitioner argues that the statement is evidence of a material fact, namely, what a POSITA would have understood about cellular providers’ peak and off-peak pricing. Id. Regarding (3), Petitioner argues that “there is no better evidence reasonably available that shows these providers’ advertised rate plans at the time.” Id. at 4. Regarding (4), Petitioner argues that admitting these exhibits serves the interest of justice” slip op. at 57

  • BurdenFwd mixedUnpatentable

    “V. CONCLUSION We determine that Petitioner has shown by a preponderance of the evidence that: (1) claims 1–6, 9, 11–14, 16–20, 22, 24, and 26 are unpatentable over Ferguson and Kehr; (2) claims 7, 15, 21, 23, and 25 are unpatentable over Ferguson, Kehr, and Yasushi; and (3) claim 8 is unpatentable over Ferguson, Kehr, and Surwit. VI. ORDER In consideration of the foregoing, it is hereby: ORDERED that claims 1–9 and 11–26 of U.S. Patent No. RE43,767 E are unpatentable;” slip op. at 60

  Patent outcomesUS RE43,767 unpatentable
  § 103 obviousnesscites KSR · Graham
• Van Der Hoeven Horticultural Projects B.V. v. Houweling Nurseries Oxnard, Inc.Some claims unpatentable
  PTAB · Jun 6, 2018 · IPR2017-00476 · APJ Jeremy M Plenzler · IPR · Final written decision

  Claim 29 is unpatentable over Reisinger under § 103; claims 1–28 were not shown unpatentable because Reisinger’s ducting is not an end gable and the proposed combination lacked a sufficient rationale.

  RulingsFinal written decision

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

    “and 2 above, the “gabled end” is a region at an end wall of the greenhouse separated from the growing section by a partition. The ’617 patent also explains that “the greenhouse can be arranged without a gabled end,” and provides an example of such an arrangement as one where “the first louver [is] arranged over the fans with the cooling mechanism located at the fans such that ambient air can be pulled directly into the tubes with the air passing the cooling mechanism for additional cooling” and “[p]ipes . . . provide an air passageway between the second vent and the fans during the mode when air from within the crop section is to be recycled.” Ex. 1001, 9:33–41 (emphases added). As noted above, in such arrangements, a direct flow path is provided between first vent 24/first louver 30 to draw ambient air into the system and piping provides a flow path from second vent 34/second louver 36 for air recirculation from growing section 16. We find that “piping,” as used in the ’617 patent, is ducting, as that term is used in the art. Consistent with that finding, Patent Owner’s declarant Mr. Turkewitsch distinguishes ducting from structure such as a plenum or a chamber. See, e.g., Ex. 1031 53:22–55:10. Accordingly, we determine that the alternate example from the ’617 patent noted above discloses use of a ducted system in place of gabled end 14 for air flow. Based on the Specification, therefore, we find that ducting or other piping is not considered an “end gable” in the ’617 patent. As discussed further below, for purposes of this decision, we do not need to determine the precise requirements of the term “end gable” in the claims in order to determine that Petitioner has failed to establish unpatentability of the claims including that term because we at least determine that, even under the broadest reasonable interpretation, an “end gable” does not include ducting.” slip op. at 8

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

    “Petitioner contends that Reisinger’s fresh air inlet 2, for example, corresponds to the “one or more vents” and flap 10 corresponds to the “one or more mechanisms selectively moveable to cooperate with said one or more vents to control air flow through said one or more vents.” Pet. 64–65 (referencing discussion of similar limitations in claim 1 discussed on pages 35–40 of the Petition). Petitioner explains that Reisinger’s climate control system also meets the additional limitations directed to operation of the “climate control system” in claim 29. Id. (referencing discussion of similar limitations in claim 1 discussed on pages 40–44 of the Petition). We are persuaded by those contentions, which Patent Owner does not dispute.10 With respect to any requirement that the claim has regarding a roof and sidewalls, generally, we are also persuaded by Petitioner’s contentions in connection with those features. See, e.g., Pet. 32 (citing Ex. 1002 ¶¶ 86– 88). Petitioner explains, for example, that “a POSA would have understood Reisinger to disclose them because a greenhouse was known to include a ceiling, and Reisinger’s disclosed function of smoothly adjusting the ratio of fresh air and recirculated air would not work unless the air inlets 1 and 2 were enclosed on the sides.” Id. Patent Owner does not dispute those contentions, which, as stated above, we find persuasive.” slip op. at 15

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

    “Reisinger’s greenhouse and climate control system, because . . . Landstrom is in the same field of endeavor as Reisinger,” “there would have been a reasonable and predictable expectation of success to a POSA in combining the teachings of Reisinger and Landstrom to incorporate Landstrom’s end gable chamber into Reisinger,” and “incorporating Landstrom’s end gable chamber into Reisinger’s greenhouse and climate control system including vents, louver and airflow modes does not change the principle of operation of either component.” Id. at 79–81. Patent Owner disputes whether Landstrom teaches an “end gable” or an “end portion,” and contends that Petitioner has failed to establish that one skilled in the art would have combined Landstrom’s teachings asserted by Petitioner in connection with those features with Reisinger. PO Resp. 66– 72, 74–75. Even accepting Petitioner’s contentions that Landstrom teaches an “end gable” and an “end portion” as required by the claims, Petitioner has failed to establish sufficiently that one skilled in the art would have found it obvious to include those features from Landstrom in Reisinger’s system. Sufficient rationale for combing features from multiple references requires more than those references merely being in the same field of endeavor and that the combination would have had a reasonable expectation of success and not change the principle of operation. See Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011) (“obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention”). We are lacking any, let alone sufficient, rationale from Petitioner in this proceeding.” slip op. at 19

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

    “obviousness in Patent Owner’s Response fails to address any relation of the claim elements, or even any particular claim, to that evidence. See PO Resp. 76–80. Nevertheless, even if we were to assume some nexus, that nexus appears to be between Patent Owner’s evidence and the features of claims 1 and 17, rather than those of claim 29. For example, in its discussion of copying, Patent Owner asserts “the ModulAir design has the same ‘corridor’ (or ‘end gable’) design as that of the Ultra Clima®.” Id. at 78. As noted above, claim 29 recites an “end portion,” rather than the “end gable” recited in claims 1 and 17. Moreover, Patent Owner presents evidence of similar designs, rather than actual copying. See, e.g., id. (“the designs are almost identical”). “[C]opying requires the replication of a specific product.” Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004). That products are similar is not persuasive evidence of copying. See Iron Grip, 392 F.3d at 1325 (“Not every competing product that arguably falls within the scope of a patent is evidence of copying. Otherwise every infringement suit would automatically confirm the nonobviousness of the patent.”). With respect to industry praise, we note that evidence, too, is only relevant when it is directed to the merits of the invention claimed. See Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311 (Fed. Cir. 2006). Patent Owner fails to provide any connection between the particular features of claim 29 and the alleged industry praise. Nevertheless, even if we were to assume sufficient nexus had been established by Patent Owner, when we weigh all of the evidence, for and against patentability, we determine that the preponderance of the evidence weighs in favor of unpatentability of claim 29. As explained above, we are persuaded that Reisinger, itself, in a single embodiment, teaches each of the features found in claim 29, other than expressly describing a roof and sidewalls. As also explained above, however, we are persuaded that one skilled in the art would readily appreciate that greenhouses include a roof and sidewalls, which Patent Owner does not dispute. Accordingly, Patent Owner’s evidence does not outweigh Petitioner’s evidence of obviousness.” slip op. at 16

  Patent outcomesUS 8,707,617 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 8,707,617

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.