- Penumbra, Inc. v. Rapidpulse, Inc.No claims unpatentablePTAB · Feb 17, 2026 · IPR2024-01261 · APJ Jamie T Wisz · IPR · Final written decision
Claims 1–20 were not shown unpatentable because the asserted combinations did not teach the claimed predetermined cycle for controlling distal fluid flow.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“(1) a person with a B.S. in engineering or an equivalent field, with two-four years of academic or industry experience in aspiration embolectomy and thrombectomy or comparable industry experience who would, where appropriate, work or consult with others, including a physician, to develop embolectomy or thrombectomy devices; or (2) an interventional neurosurgeon with at least three years of experience developing and/or using medical devices in embolectomy or thrombectomy procedures, and who would, where appropriate, work or consult with others, including an engineer, to develop such a medical device. Pet. 11 (citing Ex. 1005 ¶ 48). Petitioner also contends that, “[a] person with less education but more relevant practical experience, or more relevant education but less practical experience, may also meet this standard.” Id. Patent Owner states that for purposes of its PO Response, it “accepts ¶ 44). We adopt Petitioner’s characterization because it is consistent with the level of skill in the art at the time of the invention as reflected by the ’402 patent and the cited prior art. 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))).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“specification explicitly includes sensors similar to those in the prior art in support of their argument that the claimed “predetermined cycle” must not exclude the use of such sensors. Pet. Reply 15 (citing Ex. 1001, 32:55–33:7, 40:66–41:5, 44:9–29). We reviewed the portions of the specification cited by Petitioner. We agree with Patent Owner that one excerpt discussing sensor use appears to be directed to triggering the predetermined cycle rather than causing timing changes during the cycle itself (Ex. 1001, 32:55–66) (describing use of a pressure sensor to “determine when the vacuum channel 3 is clogged by a thrombus and automatically perform the unclogging procedures described herein”), while another excerpt discusses a sensor that Petitioner that the ’402 patent discusses the use of sensors to “tune” the system and that such “tuning” can be done statically (setting the cycle timing in advance) or dynamically (adjusting the timing during the cycle itself). See Ex. 1001, 48:19–49:50. Overall, we find that these disclosures involving sensors demonstrate that sensors may be used in various ways in different embodiments. However, none of these disclosures explicitly discuss the use of sensors in conjunction with a “pre-determined cycle.” Therefore, we find that the ’402 patent specification’s discussion of “sensors” are not particularly informative as to the appropriate construction of a “predetermined cycle” and do not outweigh the other explicit disclosures of “predetermined cycle” in the patent. We next turn to the other intrinsic evidence discussed by the parties — the prosecution history. As discussed by Patent Owner, in the Notice of Allowance, the Examiner found that Garrison did not teach or suggest a “predetermined cycle” because Garrison’s controller “changed the cycle of opening and closing the valves based on feedback from sensors.” Ex. 1004, 86. We acknowledge that the patent applicant filed subsequent comments during prosecution in which they stated that they “do[] not concede that the Examiner’s characterizations of the terms of the claims and the prior art are correct.” Id. at 29. However, we agree with Patent Owner that the importance of the Examiner’s statement in the Notice of Allowance does not rely on it being an express disclaimer (a standard which it does not meet). PO Sur-reply 8. We also considered Petitioner’s contention that the Examiner’s interpretation of Garrison may have been in error (PO Resp. 16); however, even if this were true, the Examiner’s statement still provides helpful insight into how the Examiner was interpreting the term sensors to change the opening and closing of valves during a cycle was not a “predetermined cycle.” Id. at 86. In sum, we find that Patent Owner’s proposed construction is consistent with the usage of the term “predetermined cycle” in the ’402 patent specification and prosecution history. Thus, after considering all of the cited evidence, we construe “predetermined cycle” to mean that “the timing of the sequence of valve operations in the cycle is determined beforehand, i.e., fixed, rather than varying based on feedback after operation begins.”” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“2. Other Terms The parties also provided proposed constructions for the limitations of “[limited/limiting] to a positive amount of exit flow” and “control[ling] fluid flow in and out from the distal end of the catheter.” See Pet. 15–16; Pet. Reply 1–8; PO Resp. 22–24; PO Sur-Reply 2–6. However, having evaluated the arguments and evidence before us, we determine that construction of these terms is not necessary for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“We agree with Patent Owner that neither Petitioner nor Mr. Brown propose any combination of Yang and Mullins that does not include Mullins’s pressure sensor in order “to control fluid flow in and out from the distal end of the catheter.” Indeed, in addressing the “predetermined cycle” limitation, Mr. Brown contends that Mullins discloses a “cycling controller that ‘varies aspiration pressure according to sensed pressure within the catheter lumen.’” Ex.1005 ¶¶ 131–32 (citing, e.g., Ex.1008, 27:40–28:20 (“[a] novel aspect of this pump system is the incorporation of feedback into the pump algorithm in order to produce more effective pressure cycling”)). This use of a sensor to change pressure during a cycle, is not a “predetermined cycle” under our construction. combinations is its discussion of distal end flow control, not for its sensors.” Pet. Reply 17 (citing Ex. 1035 ¶ 83). However, Petitioner’s obviousness grounds rely on the combination of Yang and Mullins, especially with regard to Mullins’s disclosure of “a controller” in order “to control fluid flow in and out.” As discussed above, Mullins relies on the sensor-feedback approach in order to control flow and we find that Petitioner has not presented persuasive evidence of how the combined disclosures of Yang and Mullins would control flow without using Mullins’s sensor feedback approach. See W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983) (error to “consider[] … references in less than their entireties, i.e., in disregarding disclosures in [them] … that diverge from and teach away from the invention”). Therefore, we determine that Petitioner has not sufficiently shown that the combination of Yang and Mullins discloses or renders obvious “a controller configured to open and close the vacuum valve and the vent valve in a predetermined cycle to change a level of vacuum at the distal end of the catheter and to control fluid flow in and out from the distal end of the catheter.” Accordingly, having considered the parties’ respective evidence and arguments, we find that Petitioner has not shown by a preponderance of the evidence that claim 1 of the ’402 patent would have been unpatentable as obvious over the combination of Yang and Mullins.” slip op. at 27
Patent outcomesUS 11,406,402 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,406,402 - Trove Brands, LLC v. Camelbak Products, LLCNo claims unpatentablePTAB · Jan 15, 2026 · IPR2024-01137 · APJ Carl M Defranco · IPR · Final written decision
Claims 1–7 and 9–23 were not shown unpatentable under § 103 because the asserted combinations failed to teach the claimed mouthpiece movement or bite-actuated compression.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Trove contends that a person of ordinary skill in the art “would have had an undergraduate degree in mechanical engineering or equivalent coursework, and a year or more of experience in designing, prototyping, and/or manufacturing fluid containers or similar products” and that “[m]ore work experience may substitute for a lower level of education, and vice versa.” Pet. 18 (citing Ex. 1003 ¶ 26). While CamelBak offers a “slightly different” level of skill in the art, it nonetheless “discerns no material difference between the definitions provided by the parties for purposes of the 2 JP 2002-211613, published July 31, 2002 (Ex. 1004, “Nakajima”). 3 US 6,070,767, issued June 6, 2000 (Ex. 1005, “Gardner”). 4 WO 2004/063042, published July 29, 2004 (Ex. 1006, “Ribarits”). 5 US 4,485,963, issued Dec. 4, 1984 (Ex. 1007, “Panicci”). 6 US 6,523,711 B1, issued Feb. 25, 2003 (Ex. 1010, “Hughes”). Board’s decision on the patentability of the ’255 patent.” PO Resp. 14–15. That being the case, we adopt Trove’s proposed definition of the level of skill in the art, as it is reasonable and consistent with what is reflected in the asserted prior art and the specification of the ’255 patent. B. Claim Construction” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed patent owner constructionDecided for patent owner
“not move in a circular path that maintains a constant radius about the axis of rotation defined by McDonough’s axle 30, but instead engages in up-and-down translational motion (red arrows) relative to axle 30. Thus, we understand CamelBak’s arguments during reexamination to have distinguished the purely rotational (i.e., circular) motion of the claimed mouthpiece from a mouthpiece that moves with a translational component relative to the pivotal axis. In sum, this reexamination history shows that, by distinguishing over the translational motion of McDonough’s mouthpiece, CamelBak limited the claimed mouthpiece to one that (1) maintains a circular path of constant radius about the pivotal mount’s axis of rotation, and (2) does not include a path that has a translational component relative to the pivotal axis. See Fenner Investments, Ltd. v. Cellco Partnership, 778 F.3d 1320, 1323 & 1325 (Fed. Cir. 2015) (“Any explanation, elaboration, or qualification presented by the inventor during patent examination is relevant, for the role of claim construction is to capture the scope of the actual invention that is disclosed, described, and patented.”) (internal quotation marks omitted); CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146, 1158 (Fed. Cir. 1997) (“[T]hrough statements made during prosecution or reexamination an applicant for a patent or a patent owner, as the case may be, may commit to a particular meaning for a patent term, which meaning is then binding in litigation.”) (emphasis added); see also Univ. of Massachusetts v. L’Oreal S.A., 36 F.4th 1374, 1379 (Fed. Cir. 2022) (“The prosecution history, in particular, may be critical in interpreting disputed claim terms, and even where prosecution history statements do not rise to the level of unmistakable disavowal, they do inform the claim construction.”) (internal quotations omitted).” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Those detailed descriptions demonstrate that “adapted to,” as recited in claims 1 and 20, means that the resilient mouthpiece is specifically designed and configured to dispense fluid as a result of a user biting the mouthpiece, rather than merely being “capable of” being compressed. See Giannelli, 739 F.3d at 1379–80. Indeed, as disclosed, a distinct benefit of the resilient mouthpiece being bite-actuated “is that a user may position the drink bottle (and mouthpiece) to a desired drinking orientation, and even a partially or completely inverted orientation, without drink fluid being dispensed from the mouthpiece” until the user bites upon the mouthpiece to commence fluid flow through self-sealing valve to the user. Id. at 10:9–19. Thus, the intrinsic evidence, i.e., the specification and figures of the ’255 patent, confirm that the phrase “adapted to” means “designed or configured to” and is not satisfied by mere hypothetical capability. That is, as claimed, the resilient mouthpiece is designed or configured to compress based on actual forces applied by a user’s teeth, as opposed to merely being capable of compression based on the inherent nature of the mouthpiece’s material. C. Obviousness” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Although we agree with Trove that Nakajima’s mouthpiece engages in up-and-down movement relative to the pivot axis identified in Trove’s annotated figures, we disagree that Nakajima’s mouthpiece is “pivotal about an axis defined by the pair of lateral projections as [they] rotate within the pair of sockets,” as required by claim 1. As discussed above, the proper construction of this claim limitation requires that the mouthpiece moves with rotational motion in a circular path of constant radius about the pivotal axis defined by the pair of lateral projections. See supra § II.B.1. Nakajima, on the other hand, discloses that its mouthpiece moves with translational motion, i.e., up-and-down movement, relative to the pivotal axis defined by lateral projections 19 of Nakajima’s lid 4—“[T]he mouthpiece moves up and down in conjunction with the opening and closing of the lid.” Ex. 1004 ¶ 3 (emphasis added); see also id., Abstract (“[T]he mouthpiece 2 moves up and down in conjunction with the opening and closing of the lid 4.”). Indeed, although Trove relies exclusively on Nakajima’s disclosure of up-and-down movement for the mouthpiece, Trove never explains how such up-and-down movement equates to rotational motion required by the disputed limitation of claim 1. Nor can it.” slip op. at 28
Patent outcomesUS 10,676,255 not shown unpatentableClaim construction§ 103 obviousnessPatents in suitUS 10,676,255 - Trove Brands, LLC v. Camelbak Products, LLCNo claims unpatentablePTAB · Oct 28, 2025 · IPR2024-00858 · APJ Carl M Defranco · IPR · Final written decision
Claims 5–7 and 16–19 were not shown unpatentable under § 102 or § 103 because the cited references failed to disclose the claimed closure retention mechanism.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesPrior construction adoptedDecided for petitioner
“1. “closure retention mechanism” Trove proposes that “closure retention mechanism” should be construed as a means-plus-function term under 35 U.S.C. § 112(f). See Pet. 18–19; Pet. Reply 1. CamelBak agrees. See PO Resp. 8. Indeed, subsequent to our institution decision, the district court in the parallel action held that the “closure retention mechanism” is a means-plus-function term governed by 35 U.S.C. § 112(f). See Ex. 2010, at 5–6. We see no reason to depart from that holding and adopt the district court’s reasoning in that regard as our own. See id. at 6–8.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with CamelBak that the plain language of the claim imposes a temporal condition on when the closure is received by the closure retention mechanism, namely, only after it is removed from the drink spout. In other words, the closure cannot be in engagement with, i.e., “received by,” the closure retention mechanism while it remains on the drink spout. This interpretation is consistent with the specification, which repeatedly states that spaced-apart tabs 56 “engage” the closure when it is removed from the spout and moved to the stowed position. Ex. 1001, 8:58–60 (“tabs 56 . . . are configured to selectively engage and retain, or otherwise grip, the closure in the stowed position”); 9:32–39 (“when the closure is positioned between and/or otherwise in engagement with the tabs, the tabs engage the closure across the maximum width, such as with the tabs resiliently deflecting, bending, or compressing to accommodate the greater width of the closure”); 11:36–39 (“the closure retention mechanism 54 may be configured to engage . . . the closure to operatively retain the closure in its stowed configuration.”); 13:26–31 (“When the closure is operatively positioned within the closed perimeter of the handle into its stowed position . . . such closure is compressed slightly.”) (emphases added). Moreover, the specification describes this engagement as occurring by means of a “friction-fit” or “snap-fit” arrangement (id. at 8:50–52, 14:33– 36), which confirms that the closure is not permanently engaged with the tabs, but rather moved into engagement with the tabs, i.e., “received by the closure retention mechanism” per the plain language of the claim. Thus, the intrinsic evidence—the claim language and the specification—supports a construction that imposes a temporal condition on the recited function of the claimed “closure retention mechanism” such that it receives the closure only after the closure has been removed from the drink spout, meaning the closure is not engaged with the closure retention mechanism before it is selectively removed from the drink spout.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“3. “retain the closure in a stowed position” CamelBak contends that this limitation should be construed to mean “to hold or keep the closure in a position removed from the drink spout.” PO Resp. 13–14; PO Sur-Reply 4. Although Trove contends that CamelBak’s construction “impermissibly rewrites” the claim language, Trove nonetheless “does not disagree that it encompasses ‘hold or keep the Indeed, the claim language itself already contemplates just such a construction by expressly reciting that the closure retention mechanism “selectively retain[s] the closure in a stowed position relative to the handle when the closure is selectively removed from the drink spout.” Ex. 1001, 18:63–66 (emphasis added). As such, we determine that further construction of this limitation is not necessary to resolve the present dispute.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Trove proposes that one of ordinary skill in the art would have had— an undergraduate degree in mechanical engineering or equivalent coursework, and a year or more of experience in designing, prototyping, and/or manufacturing fluid containers or similar products . . . [and that] [m]ore work experience may substitute for a lower level of education, and vice versa. Pet. 17–18 (citing Ex. 1003 ¶¶ 25–30). 2 US 9,272,822 B2, issued Mar. 1, 2016 (Ex. 1004, “Samartgis”). 3 EP 2 177 447 A1, published Apr. 21, 2010 (Ex. 1011, “Gorskey”). 4 US 2006/0006578 A1, published Jan. 12, 2006 (Ex. 1012, “Johnson”). 5 US 7,753,240 B2, issued July 13, 2010 (Ex. 1005, “Leoncavallo”). 6 US D586,184 S, issued Feb. 10, 2009 (Ex. 1006, “Miller”). A person having ordinary skill in the art would have had a bachelor’s degree in mechanical engineering or the equivalent coursework and approximately one year of experience with liquid-containing devices, with more work experience substituting for less education and vice versa. See PO Resp. 7 (citing Ex. 2009 ¶¶ 61–68). Because CamelBak simply paraphrases Trove’s slightly more detailed definition of the level of skill in the art, we adopt Trove’s definition, as it appears reasonable and consistent with the asserted prior art and the ’252 patent.” slip op. at 6
Patent outcomesUS 8,905,252 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,905,252 - Bowmar Archery LLC v. Matthew FuttereNo claims unpatentablePTAB · Jun 30, 2025 · IPR2024-00401 · APJ Sean P O’Hanlon · IPR · Final written decision
Claims 1–4, 7, 9, 11, 12, 15, and 17 were not shown unpatentable under any asserted anticipation or obviousness ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties do not identify, and we do not discern, any material difference between the parties’ proposed definitions. For purposes of this decision and based on the record before us, we adopt Petitioner’s proposed definition of the level of ordinary skill. Also, we note that we would reach the same conclusions under either proposed standard.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“1. Ferrule Petitioner argues that the ’177 patent “defines ‘ferrule’ as a ‘generally cylindrical body,’” which interpretation Petitioner asserts “is consistent with the ordinary meaning to [an ordinarily skilled artisan].” Pet. 19 (citing Ex. 1001, 2:53–55; Ex. 1019 ¶ 61). Patent Owner does not address Petitioner’s proposed interpretation of this claim term. See generally PO Resp. We adopt Petitioner’s uncontested interpretation of “ferrule.” 2. Blade Member Patent Owner argues that an ordinarily skilled artisan “would” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“As discussed in section II.C.2 above, we interpret a “blade member” to have a cutting surface. Petitioner does not support adequately its assertion that Lint’s barbs 19 have a cutting surface. Petitioner acknowledges that Lint discloses “barb 19,” but Petitioner merely labels the barbs as blade members in annotated versions of Lint Figure 2. Pet. 21–22, 24. Petitioner’s witness, Dr. Kuhn, provides substantially identical testimony, also failing to explain how Lint’s barbs have a cutting surface or perform a cutting function. See Ex. 1019 ¶¶ 68, 70. Such conclusory assertions fail to satisfy Petitioner’s burden of persuasion. To the contrary of Petitioner’s assertions, Lint discloses that its barbs do not perform a cutting function. Lint discloses that its barbs retract to the closed position upon impact with an animal. Ex. 1002, 2:62–67. Only when the arrowhead has “completely penetrated the flesh of an animal” does the spring urge the barbs into the extended position “to retain the arrowhead within the animal.” Id. at 2:67–70.6 Lint discloses that its barbs provide 6 During the hearing, Petitioner’s counsel argued that Lint’s disclosure of its barbs deploying “[a]fter the arrowhead 10 has completely penetrated the flesh of an animal” means the spring urges the barbs forward after the resistance to the removal of the arrow from an animal (id. at 1:53–57, 2:67–70), but Lint does not disclose its barbs as performing any cutting function. Thus, Lint’s barbs are not blade members with a cutting surface as we have interpreted the term above. Petitioner has failed to explain adequately how Lint discloses first and second blade members as recited in independent claims 1 and 11.” slip op. at 21
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“A claimed modification to the prior art may be an obvious design choice if the claimed structure performs the same function as in the prior art and it presents no novel or unexpected result over the prior art. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (finding that the use of the claimed feature “would be an obvious matter of design choice” when it “solves no stated problem” and “presents no novel or unexpected result” over the disclosed alternatives); Ex parte Maeda, Appeal No. 2010-009814, at 6–7 (PTAB Oct. 23, 2012) (informative) (“‘design choice’ may be appropriate where the applicant fails to set forth any reasons why the differences between the claimed invention and the prior art would result in a different function or give unexpected results” (citing In re Chu, 66 F.3d 292, 298–99 (Fed. Cir. 1995)). The ’177 patent explains that the purpose of the recited blade members is to maximize the cutting surface of the arrowhead through an animal’s soft flesh to increase the likelihood of a successful kill and minimize undue suffering of the animal. Ex. 1001, 1:26–30, 4:8–10, 4:21–24. The purpose of Lint’s barbs, on the other hand, is to resist removal of the arrow from an animal. Ex. 1002, 2:67–70. Indeed, Lint discloses that only when the arrowhead has “completely penetrated the flesh of an animal” does the spring urge the barbs into the extended position. Id. Thus, contrary to the conclusory assertions of Petitioner and Petitioner’s witness, Dr. Kuhn (see Pet. 49–51; Ex. 1019 ¶ 119), the recited blade members and Lint’s barbs perform vastly different functions. Neither Petitioner nor Dr. Kuhn explains adequately how the proposed modification to Lint’s barbs would be a mere matter of design choice. For at least the foregoing reasons, Petitioner’s first alternative” slip op. at 28
Patent outcomesUS 8,043,177 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,043,177 - Intelligent Wellhead Systems, Inc. v. Downing Wellhead Equipment, LLCNo claims unpatentablePTAB · Jun 9, 2025 · IPR2024-00300 · APJ Frederick C Laney · IPR · Final written decision
Claims 1–38 were not shown unpatentable because Petitioner failed to establish Krupa as prior art and failed to show the claimed fluid-triggered valve sequence in Carr or Tolman.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Although we agree with Petitioner that the plain meaning of limitation 1.2 does not require the recited determination to occur at the first well, it does require the determination to be about the condition(s) of the fluid communicated to the first well by the manifold, regardless of where or how the information is gathered to make that determination. Limitation 1.2 recites plainly that the “determining” step is specifically about whether “the fluid communicated via the manifold has satisfied one or more conditions.” Ex. 1001, 22:38–39 (emphasis added). Considering the antecedents for “the fluid” and “the manifold”––i.e., “communicating fluid to a first well via a manifold” (id. at 22:35, limitation 1.1)––limitation 1.2 expressly identifies the fluid which “the manifold” has “communicated” to the first well to be exactly the fluid used for “determining” whether “one or more conditions” are “satisfied” to trigger the recited responses. Id. This is because “the fluid” refers to a fluid passing to a first well by way of a manifold and the past tense of “communicated via the manifold” indicates, more specifically, that it is the fluid passed by the manifold which must satisfy a condition(s). The Specification of ’770 patent illustrates this by checking the “frac rate” of the fluid discharged by a manifold to a first well to make the determination about whether to permit a regular swap or a continuous pumping swap (“CP swap”). Ex. 1001, 13:30–54, Fig. 12. Therefore, contrary to Petitioner’s representation that limitation 1.2 does not “requir[e] the fluid used for ‘determining’ to have been communicated to the first well” (Pet. Reply 3), the plain meaning of limitation 1.2 does require the fluid used” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable
“anticipated by, or would have been obvious over, Krupa necessarily requires Krupa to be first qualified as prior art. See Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008) (party’s burden to prove anticipation of a patent includes initial burden of going forward with evidence that there is anticipating prior art). Under 35 U.S.C. § 102(a)(2)— the subsection under which Petitioner contends Krupa qualifies as prior art—when the reference patent document’s actual filing date is before the challenged patent’s filing date, a petitioner need only refer to the filing dates appearing on the challenged patent and reference patent document to make prima facie showing that the reference is prior art. 35 U.S.C. § 102(d)(1) (“For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application—(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent.”).” slip op. at 16
- Strike new argumentNew argument disregardedDecided for patent owner
“We determine that the Petition did not adequately present Petitioner’s contention that Tolman discloses or suggests a “master valve” that a skilled artisan would understand to be the claimed “first valve,” which is first introduced in the Reply. The issue is whether Petitioner’s identification of Tolman’s “tree valve” for the claimed first valve was particular enough to allow Petitioner to rely specifically on the “master valve” in the well tree to show Tolman discloses the first valve. We find that it is not. It is undisputed that a well tree include several different valves: (1) valves for communicating fluid to a well (e.g., for treatment or stimulation); (2) valves for communicating fluid from a well (e.g., for flowback); and (3) valves for communicating fluid both to and from a well (e.g., master valve). See Reply 19–20; Ex. 1002 ¶¶ 542–545; Ex. 1044 ¶¶ 33–34, 38–42; Tr. 33:12–18, 34:3–12, 36:8–37:18, 39:4–17; Ex. 2013, 85:4–86:19, 87:1–12, 89:2–11. And the opening/closing of these different valves are controlled independently of the other valves based on different parameters. Id. identifying a tree valve, generally, does not provide the particularity necessary to provide notice that the master valve is the particular valve being relied upon. Further compounding this problem is the fact that the Petition repeatedly refers to a plurality of valves, rather than a singular “master valve.” The variability of possible valves suggested by simply referring to a tree valve fails to provide a level of particularity that clearly identifies which specific structure is being relied upon to perform which part of the recited procedure. Ultimately, we agree with Patent Owner that because the Petition does not specifically identify the master valve in the Petition, which the Petitioner’s Reply suggest was the intention all along, Patent Owner was put at a disadvantage because its ability to fully develop a response was impeded. Therefore, Petitioner’s reliance particularly on the “master valve” of the well tree, and the newly introduced evidence associated therewith, was improper and may not be considered. Nevertheless, as discussed below, even if Petitioner were allowed to rely on the master valve, we still find the Tolman Grounds to be deficient.” slip op. at 56
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“However, Carr does not disclose or suggest: relying on the condition(s) of the fluid communicated by first isolated manifold path 122 to first well 140 to be the determinative factor for causing first and second valves 470 and 472 to perform a sequenced response that includes–– (1) opening second valve 472, (2) communicating fluid to second well 142 through second valve 472, and (3) after opening second valve 472, closing first valve 150 from communicating fluid to first well 140. At the time of the invention, when a first well is being operated individually using high pressure pumping, we find that skilled artisans would have considered concurrent operation of the second well’s valves to be hazardous and activities that can not occur. See Ex. 1031, 4 (“specifically identified activities that were restricted from occurring at the same time (i.e., CAN NOT OCCUR activities). As an example, if the operations on a well involved high pressure pumping . . . then manipulating manifold well valves and wellhead trees valves on another well were not allowed to be performed concurrently”); Ex. 2012 ¶ 148. would have had a reasonable expectation of being able to successfully avoid the unacceptable hazards known to be associated with opening second valve 472 and communicating fluid to second well 142, while individually operating on first well 140 using high pressure pumping.10 Furthermore, Petitioner provides no persuasive evidence that a skilled artisan would have known that those unacceptable hazards could be avoided (or acceptably minimized) by using a condition(s) of the fluid communicated by first isolated manifold path 122 to first well 140 as a trigger for opening second valve 472 and communicating fluid to second well 142, while first well 140 is being individually operated.” slip op. at 34
Patent outcomesUS 11,560,770 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,560,770 - LG Electronics, Inc. / LG Electronics U.S.A., Inc. et al. v. Multimedia Technologies Pte. Ltd.No claims unpatentablePTAB · Apr 29, 2025 · IPR2024-00696 · APJ St John Courtenay III · IPR · Final written decision
Claims 1–14 were not shown unpatentable under any of four §103 grounds because the cited combinations did not teach the claimed content-dependent first panel.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Accordingly, we find: (1) the temporal “currently” (shown or displayed television content) term recited in steps 1.3 and 1.4.2, and (2) the associated temporal dependency resulting from the antecedent basis requirements of step 1.5.1, weigh strongly in favor of Patent Owner’s claim construction of claim 1 for the disputed step 1.5.1 claim terms “the application panel interface” and “based on” (emphases added).” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We find Patent Owner thus correctly concludes that “[o]ptions region[] 1020 [in Woods’ Figure 10] (which Petitioner corresponds to the step 1.5.1 “first content panel” Pet. 43) is not displayed based on the currently-displayed content, even if the displayed content happens to correspond to the selected program listing.” Sur-reply 7 (citing Ex. 1005 ¶ 174; PO Resp. 26–28; Ex. 2011 ¶ 148) (emphasis added). We find Options region 1020 in Woods’ Figure 10 is instead based on user selection as argued by Patent Owner. Sur-reply 7.” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We agree with Patent Owner on this point regarding Petitioner’s proposed combination of Woods and Machida, given that neither of the proposed versions of Woods’ options region 1020 (displaying general “cast information” in Figure 10), nor Woods’ options region 1020 (alternatively displaying “detailed information” about cast member “Milo” (as depicted in Fig. 11) when the “DETAIL INFO” tab is selected by the user in functions menu bar 1010 of Fig. 10), performs playback of content display in media region 1030. See also Ex. 1005, Fig. 11.” slip op. at 53
- Expert testimonyPatent owner expert creditedDecided for patent owner
“Based upon our review of the complete record, we credit Dr. Surati’s testimony that the information in Woods’ options region 1020 (i.e., the first content panel as mapped by Petitioner (Pet. 43; Pet. Reply 16–17)), is determined independently of any currently displayed program content, and what is displayed (e.g., the cast of “Heroes” as depicted in Figure 10) is in fact based on the selected program listing, which does not teach or suggest 1.5.1 (nor recitation 1.5.2 “wherein the first content panel is a first type of application panel”). Ex. 2011 ¶ 143. We find persuasive Dr. Surati’s testimony that “a POSITA would readily understand that the information displayed [in Woods’] region 1020 [of Figure 10] is based on the selected program listing (e.g., Heroes 912) made by the user in Figure 9, not the currently-displayed content in media region 1030 of Figure 10.” Id. (emphases added). In support, Dr. Surati further testifies that “[i]n fact, region 1020 of Figure 10 presents information about the selected program listing for Heroes and is not based on the Mercedes advertisement displayed in media region 1030.” Id.; see also id. at ¶ 144 (depicting Ex. 1005, Fig. 10 above paragraph 144) (emphasis added).” slip op. at 37
Patent outcomesUS 9,247,174 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,247,174 - LG Electronics, Inc. / LG Electronics U.S.A., Inc. et al. v. Multimedia Technologies Pte. Ltd.No claims unpatentablePTAB · Apr 29, 2025 · IPR2024-00352 · APJ St John Courtenay III · IPR · Final written decision
Claims 1–14 were not shown unpatentable because Woods, alone or combined with Istvan and/or Machida, did not teach the claimed content panel based on currently displayed content.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the declaration testimony of Dr. Lippman, Petitioner contends that an ordinarily skilled artisan for the ’174 patent “would have had a bachelor’s degree in Electrical Engineering, Software Engineering, or Computer Engineering, or equivalent training, and approximately two years of experience working in the field of television systems and networking, human-computer interaction, or related technologies,” and that a “[l]ack of professional experience can be remedied by additional education, and vice versa.” Pet. 10 (citing Ex. 1003 ¶¶ 18–20). Patent Owner indicates it “accepts the Petitioner’s definition of the POSITA.” PO Resp. 9–10. Based on the final record before us, we adopt Petitioner’s definition of the level of ordinary skill in the art. On the final record, we are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’174 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself can reflect appropriate level of ordinary skill in art).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Accordingly, we find: (1) the temporal “currently” (shown or displayed television content) term recited in steps 1.3 and 1.4.2, and (2) the associated temporal dependency resulting from the antecedent basis requirements of step 1.5.1, weigh strongly in favor of Patent Owner’s claim construction of claim 1 for the disputed step 1.5.1 claim terms “the application panel interface” and “based on” (emphases added). We emphasize that we are not reading a “dependency” from the ’174 patent specification into the claim. Rather, we conclude a temporal antecedent basis under the plain language of the claim for step 1.5.1 and “wherein” clause 1.5.2.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“region[] 1020 [in Woods’ Figure 10] (which Petitioner corresponds to the step 1.5.1 “first content panel” Pet. 43) is not displayed based on the currently-displayed content, even if the displayed content happens to correspond to the selected program listing.” Sur-reply 7 (citing Ex. 1005 ¶ 174; PO Resp. 26–28; Ex. 2011 ¶ 148) (emphasis added). We find Options region 1020 in Woods’ Figure 10 is instead based on user selection as argued by Patent Owner. Sur-reply 7.” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner
“But Patent Owner disagrees: A POSITA would readily understand that the two user operation panels of Machida are for playback/navigation of content presented in the content display area. The operation panels are very distinct from the function options menu 1020 of Woods’ Figure 10 that the Petitioner alleges to be the claimed “first content panel” (when displaying “cast information” for a selected program listing like Heroes) and the claimed “second content panel” (when displaying “detailed information” for the same selected program listing). PO Resp. 67–68 (citing Ex. 1011 ¶ 250). Patent Owner additionally argues that a “POSITA would not modify Woods’ options region 1020 displaying ‘cast information’ with either of Machida’s operational panels for playback of content.” PO Resp. 68. In support, Patent Owner emphasizes that “Woods’ options region 1020 displaying ‘cast information’ does not perform playback of content displayed in media region 1030. Likewise, Woods’ options region 1020 displaying ‘detailed information’ about a selected program listing does not perform playback of content displayed in media region 1030.” PO Resp. proposed combination.” PO Resp. 69 (citing Ex. 2011 ¶ 252). We agree with Patent Owner on this point regarding Petitioner’s proposed combination of Woods and Machida, given that neither of the proposed versions of Woods’ options region 1020 (displaying general “cast information” in Figure 10), nor Woods’ options region 1020 (alternatively displaying “detailed information” about cast member “Milo” (as depicted in Fig. 11) when the “DETAIL INFO” tab is selected by the user in functions menu bar 1010 of Fig. 10), performs playback of content display in media region 1030. See also Ex. 1005, Fig. 11.” slip op. at 52
Patent outcomesUS 9,247,174 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,247,174 - Robert Bosch LLC / Mercedes-Benz USA, LLC v. Westport Fuel Systems Canada Inc.No claims unpatentablePTAB · Feb 3, 2025 · IPR2023-00292 · APJ Carl M Defranco · IPR · Final written decision
Claims 1–3, 6, 11, 12, 14, 15, and 18–20 were not shown unpatentable because the asserted combinations failed to establish the claimed substantially constant hydraulic-fluid thickness.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Westport does not dispute Bosch’s proposed definition of the level of skill in the art. PO Resp. 4 (quoting Pet. 23). Based on our review, we see no reason not to adopt Bosch’s undisputed definition of the level of skill in the art, as it appears consistent with the prior art and the specification of the ’829 patent.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those claim terms “that are in controversy” need be construed and “only to the extent necessary to resolve the controversy.” AstraZeneca AB v. Mylan Pharms. Inc., 19 F.4th 1325, 1345 (Fed. Cir. 2021) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Here, there does not appear to be a dispute over the meaning of any claim terms. And, after reviewing the record, we do not perceive the need to expressly construe any particular claim term in order to determine patentability of the challenged claims.” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“In contrast, the testimony of Bosch’s expert ignores Klügl’s express teachings and is fraught with contradictions that undermine the weight of that testimony. While this case may be seen as a battle of the experts over their respective interpretations of Klügl, it is clear that Bosch’s expert loses given his inability to credibly explain his opinions during cross-examination. For instance, despite opining in his declaration that Klügl satisfies claim element 1(e) because “the fluid in chamber 5 is held in place by a membrane 6 and moves through a cylindrical space of constant width and unchanging shape” (Ex. 1003 ¶ 220 (emphasis added)), surprisingly, Bosch’s expert could not, or would not, provide his opinion when asked on cross-examination about the meaning of “flexible” and “membrane” in the context of Klügl’s disclosure— Q. [By Westport’s counsel] What’s your understanding what flexible means in the context of the Klugl reference? . . . A. [By Bosch’s expert] Again, I haven’t been asked to offer a formal opinion of what flexible means in light of this, but if you want to talk about a specific -- excuse me -- part of the document, I’d be happy to. Q. What is a membrane? A. Usually, it’s a thin sheet of material but I haven’t formed a formal opinion on it. Q. What is a flexible membrane? A. Again, I haven’t offered a formal opinion what a flexible membrane is.” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Westport. That is because Bosch’s argument that Klügl’s hydraulic fluid maintains substantially constant thickness is premised on the erroneous belief that Klügl’s membrane 6 will not flex. But, as Westport correctly notes, Klügl expressly teaches that membrane 6 is “flexible.” See, e.g., Ex. 1006, 7:45–47 (“[F]lexible membranes 6, 8, 26 . . . have a progressive characteristic curve of the spring force in relation to the spring deflection.”), 7:68–9:31 (repeatedly referencing “first flexible element (6)” and “first flexible membrane (6)”). Consistent with this flexibility, Klügl explains that membrane 6 flexes to maintain contact with drive piston 3, stating specifically that “in the rest position without being actuated due to thermal influences or signs of aging, . . . the first membrane 6 is moved in the direction of the drive piston 3” or “is pushed in by the drive piston 3 so that the transmission medium is pressed through the throttle 10 into the compensation chamber 7.” Ex. 1006, 3:63–4:10 (emphases added). And because Klügl’s membrane 6 flexes when transmission module 2 is unactuated, it follows that membrane 6 will also flex when transmission module 2 is actuated.” slip op. at 15
Patent outcomesUS 6,298,829 not shown unpatentableClaim construction§ 103 obviousnessPatents in suitUS 6,298,829 - Robert Bosch LLC / Mercedes-Benz USA, LLC v. Westport Fuel Systems Canada Inc.No claims unpatentablePTAB · Feb 3, 2025 · IPR2023-00293 · APJ Frances L Ippolito · IPR · Final written decision
Claims 1–3, 6, 13, 14, 17–21, and 26–28, 41 were not shown unpatentable because the asserted combinations did not establish the claimed hydraulic link limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends: A POSITA in the technology field of the ’138 patent would have had a degree in mechanical engineering or a similar discipline, along with 2 years of professional experience working with the design and development of fuel injection systems for internal combustion engines or an equivalent level of skill, knowledge, and experience. (See Ex. 1003, ¶¶ 37–39, 41.) This POSITA would be aware of and generally knowledgeable about how fuel injector valves are structured and operate, and how they are used to deliver fuel to an engine’s combustion chambers. (Id., ¶ 40.) Pet. 23. Patent Owner does not dispute Petitioner’s proposed definition. See PO Resp. 4. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Based on the complete record, we do not perceive the need to construe any claim limitation. Claims must be construed “only to the extent necessary to resolve the controversy.” AstraZeneca AB v. Mylan Pharms. Inc., 19 F.4th 1325, 1345 (Fed. Cir. 2021) (quoting Vivid Techs., Inc. v. American Science & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe the claim preambles here where the construction is not ‘material to the [obviousness] dispute.’” (citations omitted, alteration in original)).” slip op. at 12
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“mere fact” that Klügl labels the membrane as “flexible.” As discussed, Patent Owner explains Klügl teaches membrane 6 is flexible and that membrane 6 deflects and moves in response to fluid pressure in chamber 5 and contact with piston 3. PO Resp. 34 (citing Ex. 1006, 3:63–4:10). Additionally, Dr. Atkinson’s testimony is consistent with Klügl’s disclosure. Dr. Atkinson, explains that “[i]n all embodiments shown, Klügl only ever specifies and describes membrane 6 as a “flexible” membrane or element acknowledging that this flexibility is a necessary and desired feature of its intended purpose and behavior.” Ex. 2022 ¶ 80. With this underlying disclosure in mind, Dr. Atkinson further reasons that a flexible membrane will tend to deform longitudinally upward where it contacts the drive piston and bulge outward based on the structure disclosed in Figure 1. See id. ¶¶ 63, 66–67, 77–81, 87. In contrast, Dr. Quinlan’s testimony in many instances, including this one, is substantively incomplete and fraught with contradictions that undermine the weight of his testimony. For example, at his cross- examination deposition, he testified that he had seen and worked with membranes, but could not provide his opinion on the meaning of “flexible” or “membrane” as disclosed in Klügl. See Ex. 2025, 47:14–48:1. Dr. Quinlan was then directed to column 8 in Klügl, where Klügl teaches among other things that “the transmission module (2) has a pressure chamber (5), which is filled with a transmission medium and is delimited by a first flexible membrane (6).” See id. at 65:5–15; Ex. 1006, 8:44–46 (emphasis added). Provided below is the exchange between Patent Owner’s counsel and Dr. Quinlan regarding this express disclosure: slip op. at 37
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Figure 1 of Klügl depicts an injection valve including housing 12 and piezoelectric actuator 1, which is arranged between upper stop 13 and transmission module 2. Ex. 1006, 1:47–51. We observe that transmission module 2 includes pressure chamber 5 that is at least partially filled with hydraulic fluid and is “delimited” by first membrane 6. Id. at 1:60–62, 1:68–2:2. Throttle or connecting bore 10 connects pressure chamber 5 to compensation chamber 7. Id. at 1:62–66. The connecting bore or throttle allows transmission fluid to flow between pressure chamber 5 and compensation chamber 7. Id. at 3:56–4:10. We further note that Klügl expressly teaches first membrane 6 is “flexible.” Ex. 1006, 7:45–47 (“[F]lexible membranes 6, 8, 26 . . . have a progressive characteristic curve of the spring force in relation to the spring deflection.”). Indeed, consistent with this flexibility, Klügl explains that membrane 6 “moves” to maintain contact with drive piston 3. Specifically, Klügl teaches: [i]f the piezoelectric actuator 1 shortens in the rest position without being actuated due to thermal influences or signs of aging in relation to the housing 12, the spring plate 8 pushes the transmission medium from the compensation chamber 7 via the throttle 10 into the pressure chamber 5, so that the first membrane 6 is moved in the direction of the drive piston 3 and, as a result, the drive piston 3 bears against the first membrane 6 despite the shortening of the piezoelectric actuator 1. However, if the distance between the piezoelectric actuator 1 and the drive piston 3 is reduced, the first membrane 6 is pushed in by the drive piston 3 so that the transmission medium is pressed through the throttle 10 into the compensation chamber 7 against the spring force of the spring plate 8. As a result, the drive piston 3 is always in contact with the first membrane 6 in this case as well. Id. at 3:63–4:10 (emphases added).” slip op. at 34
Patent outcomesUS 6,575,138 not shown unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 6,575,138 - Masimo Corporation v. Apple Inc.No claims unpatentablePTAB · Oct 15, 2024 · IPR2023-00745 · APJ Robert L Kinder · IPR · Final written decision
Claims 1–4 and 8–22 were not shown unpatentable because Mills did not disclose the required embedded structure and Markel combined with Mills did not teach it; the revised motion to amend was dismissed as moot.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
“Patent Owner’s Revised Contingent Motion to Amend asserts that in “the event the Board finds at least one challenged [Revised Motion to Amend] claim unpatentable, [Patent Owner] respectfully requests that the Board grant this Motion with respect to the corresponding proposed substitute claim(s).” Paper 27, 1. Because we determine that Petitioner has not established that any of the challenged claims 1–4 and 8–22 are unpatentable, Patent Owner’s Revised Contingent Motion to Amend is moot.” slip op. at 61
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s proposed level of ordinary skill in the art is somewhat broader in both education and proposed work experience. Patent Owner’s proposed work experience is somewhat vague and potentially outside the scope of the claimed invention. For example, the requirement that the person of ordinary skill in the art have experience with the “capture and processing of data or information, including but not limited to physiological information,” would seemingly encompass data processing areas that do not relate to the scope of the claimed invention. We adopt Petitioner’s level of the level of ordinary skill in art because it is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). Our analysis and the end result are the same under either proposed definition.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“structure where a lead is embedded in a portion of the enclosure from other embodiments where a lead is merely positioned against or in parallel contact with a portion of the enclosure. See Ex. 2003 ¶¶ 36–37. The Specification describes distinct embodiments such as “lead 472 of the heart sensor can be positioned against the back surface of bezel 460,” or “[a]lternatively, lead 472 can be placed within the thickness of bezel 460 (e.g., in a pocket within the bezel wall), but underneath the outer surface of the bezel.” Ex. 9:44–48. We agree with Patent Owner, and Dr. Kenny, that “[t]his passage distinguishes a lead that is embedded in a portion of the enclosure from a lead that is merely ‘positioned against’ or in parallel contact with a portion of the enclosure.” PO Resp. 6–7 (citing Ex. 2003 ¶¶ 33–35). See also Ex. 2008, 31:10–33:18, 109:18–110:19 (Petitioner’s expert, Mr. Oslan, suggesting that a first component or object in parallel contact with and positioned under a second component or object would not necessarily indicate that the first component or object is embedded in the second component or object). Similarly, we also agree that “the claims of the ’257 use the term ‘embedded in’ while also using the word ‘embedded’ in other contexts, which” indicates distinct claim scope for “the term ‘embedded in,’” versus “the broader term ‘embedded.’” Ex. 2003 ¶ 38. For instance, claim 9 distinctly requires “embedded with,” which is a broader term that, according to Dr. Kenny, encompasses embodiments where a lead may be adjacent/parallel to the first portion of the enclosure. Id.” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“under the exterior of the first portion” (see Pet. 21–22, 24–25; Pet. Reply 4); and (3) leaf spring 62 is embedded in housing 12 and electrode 14 (see Pet. 22–24). None of Petitioner’s mappings disclose every element of claim 1 and Petitioner improperly jumps between these various mappings without fully examining a single mapping for each and every limitation of claim 1. See Pet. 18–25. In essence, Petitioner invites the Board to piece together a single theory that meets all claim elements from these disparate theories that each require distinct structure within Mills. See Amazon.com, Inc., et al. v. Avago Technologies General IP (Singapore) PTE. LTD., IPR2017-01112, Paper 11, at 13 (PTAB Aug. 23, 2017) (“Petitioner is inviting us to assume the role of archeologist of the record, which invitation we decline.”).” slip op. at 36
Patent outcomesUS 10,076,257 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,076,257
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.