- Avita Medical Limited v. Renovacare Sciences Corp.Institution deniedPTAB · Dec 18, 2017 · IPR2017-01243 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution on all grounds, finding the petition relied on the same or substantially the same prior art previously considered by the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Our discretion pursuant to § 325(d) involves a balance between several competing interests. “On the one hand, there are the interests in conserving the resources of the Office and granting patent owners repose on issues and prior art that have been considered previously.” Fox Factory, Inc. v. SRAM, LLC, Case IPR2016-01876, slip op. at 7 (PTAB Apr. 3, 2017) (Paper 8). “On the other hand, are the interests of giving petitioner the opportunity to be heard and correcting any errors by the Office in allowing a patent—in the case of an inter partes review—over prior art patents and printed publications.” Id.” slip op. at 5
Discretionary denialPatents in suitUS 9,610,430 - Icon Health & Fitness, Inc. v. Nautilus, Inc.Rehearing deniedPTAB · Oct 27, 2017 · IPR2017-00495 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution because Petitioner did not show a reasonable likelihood of prevailing on any challenge to claims 1–16.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Pursuant to 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d).” slip op. at 3
NonePatents in suitUS 8,323,155 - Icon Health & Fitness, Inc. v. Nautilus, Inc.Rehearing deniedPTAB · Oct 27, 2017 · IPR2017-00493 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution because the Petition failed to identify corresponding structure and show the prior art disclosed the same or equivalent structures.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Pursuant to 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous We did not undertake an analysis to determine whether the equivalent structure was shown in the prior art because Petitioner failed to do so in the first instance: “By not identifying a corresponding structure, material, or acts in the ’542 patent specification, Petitioner does not show where that structure, material, or acts or its equivalent is disclosed by Maresh-I.” Dec. 18 (citing 37 C.F.R. § 42.104(b)(4) (“The petition must specify where each element of the claim is found in the prior art . . . relied upon.”)). conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d).” slip op. at 3
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“In particular, we first construed “right means,” “left means,” “second end portion support,” “first support,” “second support,” “first member,” and “second member” as invoking § 112, ¶ 6, because none of the terms has a sufficiently definite meaning as a name for structure. Dec. 7–15. Second, with respect to independent claims 1, 46, 75, and 86, we found that Petitioner did not identify corresponding structure, material, or acts in the specification for performing each of the recited functions. See id. at 17–18 (discussing Maresh-I), 19–21 (discussing Stearns). With respect to independent claims 91, 94, 97, and 100, we found that even if we accepted Petitioner’s identification of the alleged corresponding structure, material, or acts, Petitioner’s analysis failed to show that the prior art structures were the same or equivalent. Id. at 18 (discussing Maresh-I), 20–21 (discussing Stearns). Rather, Petitioner’s analysis focused entirely on the functional language of these claim elements without identifying and addressing the corresponding structure. Id. at 18 (discussing Maresh-I), 20–21 (discussing Stearns).1” slip op. at 2
- BurdenNot shown unpatentable
“We disagree. Petitioner did not do either. First, Petitioner did not identify any portion of the specification describing corresponding structure in the Petition. Second, there is no mention of tracks or swing arms in the discussion of Maresh-I and Stearns at pages 14, 15, and 40 of the Petition, let alone any argument that the structures identified in either reference are equivalent. See Pet. 14, 15, 40. Accordingly, we did not misapprehend or overlook whether Petitioner complied with these requirements for means-plus-function claim terms; Petitioner did not. Petitioner’s Alleged Analysis and Evidence Regarding the Same or Equivalent Structures” slip op. at 7
Claim constructionPatents in suitUS 7,341,542 - Icon Health & Fitness, Inc. v. Nautilus, Inc.Rehearing deniedPTAB · Oct 27, 2017 · IPR2017-00494 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution because the Petition did not explain how the prior-art structures were the same as or equivalent to the claimed structures.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“focuses on the functional language of these claim limitations and fails to explain how the structures of Maresh-I and Stearns are the same as, or equivalent to, those identified in the ’219 patent. Dec. 15–16. For example, Petitioner’s discussion of Maresh-I equates the claimed “first means” and “second means” with Maresh-I’s “radially displaced pins of cranks 760,” but fails to make any argument explaining how these are the same or equivalent structures. See Pet. 13–14. Petitioner also points to paragraphs 37 and 90 of Mr. Ganaja’s declaration where he testifies that Maresh-I’s radially displaced pins are crank arms and that a connection between rollers 2023 and cranks 2020 is the crank arm in Stearns. Req. Reh’g 5–6 (discussing Ex. 1006 ¶ 37), 6 (discussing Ex. 1006 ¶ 90). There is no question that Mr. Ganaja’s testimony in these paragraphs addresses the issues that we found lacking in the Petition. The problem for Petitioner, however, is that the Petition itself did not include these arguments equating the structures as Mr. Ganaja did. Citing to these paragraphs of Mr. Ganaja’s declaration without providing any explanation of the significance thereof in the Petition itself is insufficient. See 37 C.F.R. § 42.6(3) (“Arguments must not be incorporated by reference from one document into another document.”). See also DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.”).” slip op. at 4
- BurdenDecided for patent owner
“focuses on the functional language of these claim limitations and fails to explain how the structures of Maresh-I and Stearns are the same as, or equivalent to, those identified in the ’219 patent. Dec. 15–16. For example, Petitioner’s discussion of Maresh-I equates the claimed “first means” and “second means” with Maresh-I’s “radially displaced pins of cranks 760,” but fails to make any argument explaining how these are the same or equivalent structures. See Pet. 13–14. Petitioner also points to paragraphs 37 and 90 of Mr. Ganaja’s declaration where he testifies that Maresh-I’s radially displaced pins are crank arms and that a connection between rollers 2023 and cranks 2020 is the crank arm in Stearns. Req. Reh’g 5–6 (discussing Ex. 1006 ¶ 37), 6 (discussing Ex. 1006 ¶ 90). There is no question that Mr. Ganaja’s testimony in these paragraphs addresses the issues that we found lacking in the Petition. The problem for Petitioner, however, is that the Petition itself did not include these arguments equating the structures as Mr. Ganaja did. Citing to these paragraphs of Mr. Ganaja’s declaration without providing any explanation of the significance thereof in the Petition itself is insufficient. See 37 C.F.R. § 42.6(3) (“Arguments must not be incorporated by reference from one document into another document.”). See also DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.”). Accordingly, we did not misapprehend or overlook discussion in the Petition regarding these structures.” slip op. at 4
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“In particular, we first construed “first means” and “second means” as invoking § 112, ¶ 6, as proposed by Petitioner and Patent Owner. Dec. 9. Second, we found that even if we accepted Petitioner’s identification of the alleged corresponding structure, material, or acts, Petitioner’s analysis failed to show that the prior art structures were the same or equivalent. Id. at 15– 16 (discussing Maresh-I and Stearns). Rather, Petitioner’s analysis focused entirely on the functional language of these claim elements without addressing the corresponding structure. Id.” slip op. at 2
Claim constructionPatents in suitUS 7,632,219 - Icon Health & Fitness, Inc. v. Nautilus, Inc.Rehearing deniedPTAB · Oct 27, 2017 · IPR2017-00490 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied rehearing, finding no overlooked or misapprehended matter in its § 112, ¶ 6 construction and its determination that Petitioner’s prior-art analysis was deficient.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Pursuant to 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d).” slip op. at 3
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“In particular, we first construed “second portion support” as invoking § 112, ¶ 6, because it did not have a sufficiently definite meaning as a name for structure. Dec. 7–10. Second, we found that Petitioner did not identify corresponding structure, material, or acts in the specification for performing the recited function of guiding the second portions of the right and left foot engagement members to follow a forward-rearward reciprocating motion in response to the user moving the user’s feet with striding steps during the striding exercise as the right and left crank arms reciprocally lift and lower the first portions of the right and left foot engagement members. Id. at 11–12 (quoting Ex. 1001, 22:65–23:4). Third, we determined that Petitioner’s analysis was deficient because it did not identify where the same structure, material, or acts or their equivalents were found in the prior art.1 Id. at 12–13.” slip op. at 2
- BurdenNot shown unpatentable
“§ 112, ¶ 6, because it did not have a sufficiently definite meaning as a name for structure. Dec. 7–10. Second, we found that Petitioner did not identify corresponding structure, material, or acts in the specification for performing the recited function of guiding the second portions of the right and left foot engagement members to follow a forward-rearward reciprocating motion in response to the user moving the user’s feet with striding steps during the striding exercise as the right and left crank arms reciprocally lift and lower the first portions of the right and left foot engagement members. Id. at 11–12 (quoting Ex. 1001, 22:65–23:4). Third, we determined that Petitioner’s analysis was deficient because it did not identify where the same structure, material, or acts or their equivalents were found in the prior art.1 Id. at 12–13.” slip op. at 2
Claim constructionPatents in suitUS 6,689,019 - Edwards Lifesciences Corporation v. Boston Scientific Scimed, Inc.Institution deniedPTAB · Oct 25, 2017 · IPR2017-01296 · APJ Amanda F Wieker · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of proving the means-plus-function limitations unpatentable over the asserted prior art.
RulingsInstitution decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“Claim limitations that include the term “means” or “means for” are presumed to invoke 35 U.S.C. § 112 ¶ 6. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348–49 (Fed. Cir. 2015) (en banc in relevant part) (“The converse presumption remains unaffected: ‘use of the word ‘means’ creates a presumption that § 112, ¶ 6 applies.’”); see also Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703 (Fed. Cir. 1998); Greenberg v. Ethicon Endo–Surgery, Inc., 91 F.3d 1580, 1584 (Fed. Cir. 1996) (“[Use] of the term ‘means’ has come to be so closely associated” slip op. at 8
- BurdenInstitution denied meritsInstitution denied
“(c) Identification of Corresponding Structure In proceedings before this Board, our Rules require that if a challenged claim contains a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6, Petitioner is required to construe the limitation and to “identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3). Here, the Petition fails to identify any portion of the ’543 patent Specification that describes the structure, material, or acts that correspond to the functions recited in the above-referenced limitations. See Pet. 19; see also 37 C.F.R. § 42.6(a)(3). It is not this panel’s responsibility to identify the portions of the Specification upon which it believes Petitioner may rely to support its positions with respect to 35 U.S.C. § 112 ¶ 6. Our Rules place this burden on Petitioner, so that the panel may evaluate effectively the challenged claims vis-à-vis the asserted prior art, as discussed below.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“limitation is unpatentable over the asserted prior art, Petitioner must show that the structure that corresponds to a claimed function, or its equivalent, is found in, or obvious over, the applied prior art. See Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299–1300 (Fed. Cir. 2009) (“It is firmly established in our precedent that a structural analysis is required when means-plus-function limitations are at issue; a functional analysis alone will not suffice.”) (emphases added). In this case, Petitioner’s failure to construe the claims in accordance with our Rules is determinative. By failing to identify structure, material, or acts in the ’543 patent Specification that correspond to the claimed functions, Petitioner necessarily has not shown where that structure, material, acts, or their equivalents are disclosed in the applied prior art. Compare Pet. 19, with id. at 32 (discussing “expandable inflatable means”), 32–33 (discussing “mounting and retaining means for receiving the stent”), 38 (discussing “means for inflating the balloon”), 47– 48, 52, 61–63, 67, 74, 77. For these reasons, Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of independent claims 1 or 19 based on any of the asserted grounds of unpatentability. Petitioner’s challenges to dependent claims 2, 3, 6–12, 20, 21, and 24–29 similarly fail for the same reasons. III. CONCLUSION For the foregoing reasons, we determine Petitioner has not demonstrated a reasonable likelihood it would prevail in establishing the unpatentability of the challenged claims of the ’543 patent. IV. ORDER Upon consideration of the record before us, it is: ORDERED that the Petition is denied as to all challenged claims, and no trial is instituted.” slip op. at 11
Claim constructioncites PhillipsPatents in suitUS 6,007,543 - Edwards Lifesciences Corporation v. Boston Scientific Scimed, Inc.Institution deniedPTAB · Oct 25, 2017 · IPR2017-01304 · APJ Amanda F Wieker · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted ground.
RulingsInstitution decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“recite the term “means.” See Ex. 1001, 26:5–6, 26:10–13 (“expandable inflation means . . . for expansion of the stent”; “mounting and retaining means . . . to provide a securement for the stent”). With respect to these limitations, Petitioner contends that these limitations do not invoke 35 U.S.C. § 112 ¶ 6. Pet. 22. Petitioner, however, does not discuss the presumption associated with use of the word “means” in these limitations, and does not provide a single citation to intrinsic or competent extrinsic evidence to suggest that the presumption is unwarranted in this case. Instead, Petitioner simply incorporates by reference a letter between counsel in the co-pending district court litigation. Id. (citing Ex. 1007). Even if Petitioner’s incorporation by reference were proper, but cf. 37 C.F.R. § 42.6(a)(3), the cited letter also fails to explain how or why applicable intrinsic or extrinsic evidence warrants deviating from the presumption that use of the term “means” invokes 35 U.S.C. § 112 ¶ 6. Although this letter suggests that the parties may agree that § 112 ¶ 6 should not apply to these limitations, a non-binding agreement between parties does not constitute persuasive evidence and does not suspend our Rules. See infra Section II.A.3.a. Further, claim construction, and whether § 112 ¶ 6 applies, is a legal determination made based on a hierarchy of evidence–– intrinsic evidence being the most persuasive. In addition to stating that 35 U.S.C. § 112 ¶ 6 does not apply, the Petition also provides constructions for these limitations. Pet. 22. However, the proposed constructions simply reiterate the functions recited by the claims. For example, Petitioner construes “expandable inflation means . . . for expansion of the stent” as “a structure capable of being expanded and inflated.” Id. Petitioner’s contentions in this regard fail to explain how or why Petitioner believes any applicable evidence overcomes the presumption that use of the term “means” invokes § 112 ¶ 6. It is not this panel’s charge to divine the reasoning or justification for Petitioner’s position, without any guiding explanation from Petitioner. Accordingly, absent any persuasive rebuttal, we presume that “expandable inflation means . . . for expansion of the stent” and “mounting and retaining means . . . to provide a securement for the stent” invoke 35 U.S.C. § 112 ¶ 6.” slip op. at 10
- BurdenInstitution denied meritsDenied
“challenged claim contains a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6, Petitioner is required to construe the limitation and to “identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3). Here, the Petition fails to identify any portion of the ’558 patent Specification that describes the structure, material, or acts that correspond to the functions recited in the above-referenced limitations. See Pet. 22; see also 37 C.F.R. § 42.6(a)(3). It is not this panel’s responsibility to identify the portions of the Specification upon which it believes Petitioner may rely to support its positions with respect to 35 U.S.C. § 112 ¶ 6. Our Rules place this burden on Petitioner, so that the panel may evaluate effectively the challenged claims vis-à-vis the asserted prior art, as discussed below. B. Asserted Grounds of Unpatentability To show that a challenged claim containing a means-plus-function limitation is unpatentable over the asserted prior art, Petitioner must show that the structure that corresponds to a claimed function, or its equivalent, is found in, or obvious over, the applied prior art. See Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299–1300 (Fed. Cir. 2009) (“It is firmly established in our precedent that a structural analysis is required when means-plus-function limitations are at issue; a functional analysis alone will not suffice.”) (emphases added). In this case, Petitioner’s failure to construe the claims in accordance with our Rules is determinative. By failing to identify the structure, material, or acts in the ’558 patent Specification that correspond to the claimed functions, Petitioner necessarily has not shown where that structure, material, acts, or their equivalents are disclosed in the applied prior art. Compare Pet. 22, with id. at 33–34 (discussing “expandable inflation means . . . for expansion of the stent”), 34–35 (discussing “mounting and retaining means . . . to provide a securement for the stent”), 47–49, 55–57. For these reasons, Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of independent claim 1 based on any of the asserted grounds of unpatentability. Petitioner’s challenges to dependent claims 2, 9, 14, and 20–22 similarly fail for the same reasons.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“limitation is unpatentable over the asserted prior art, Petitioner must show that the structure that corresponds to a claimed function, or its equivalent, is found in, or obvious over, the applied prior art. See Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299–1300 (Fed. Cir. 2009) (“It is firmly established in our precedent that a structural analysis is required when means-plus-function limitations are at issue; a functional analysis alone will not suffice.”) (emphases added). In this case, Petitioner’s failure to construe the claims in accordance with our Rules is determinative. By failing to identify the structure, material, or acts in the ’558 patent Specification that correspond to the claimed functions, Petitioner necessarily has not shown where that structure, material, acts, or their equivalents are disclosed in the applied prior art. Compare Pet. 22, with id. at 33–34 (discussing “expandable inflation means . . . for expansion of the stent”), 34–35 (discussing “mounting and retaining means . . . to provide a securement for the stent”), 47–49, 55–57. For these reasons, Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of independent claim 1 based on any of the asserted grounds of unpatentability. Petitioner’s challenges to dependent claims 2, 9, 14, and 20–22 similarly fail for the same reasons. III. CONCLUSION For the foregoing reasons, we determine Petitioner has not demonstrated a reasonable likelihood it would prevail in establishing the unpatentability of the challenged claims of the ’558 patent. IV. ORDER Upon consideration of the record before us, it is: ORDERED that the Petition is denied as to all challenged claims, and no trial is instituted.” slip op. at 12
Claim constructioncites PhillipsPatents in suitUS 6,203,558 - Facebook, Inc. v. Sound View Innovations, LLCRehearing deniedPTAB · Oct 19, 2017 · IPR2017-00985 · APJ James B Arpin · IPR · Rehearing
The Board denied rehearing and left institution denied for claims 1–3 because the petition lacked required means-plus-function constructions under the adopted claim-construction standard.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The request must identify, with specificity, all matters that the moving party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 3
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Not reached
“Under our Rules setting forth the requirements for the content of the petition, “[w]here the claim to be construed contains a means-plus-function . . . limitation as permitted under 35 U.S.C. [§ 112, ¶ 6], the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3) (emphasis added); see Inst. Dec. 13. Thus, where the challenged claim contains a means-plus-function limitation, the petition must provide a means-plus-function construction for that limitation. Consequently, it was not our task to determine first whether the word “controller” is a nonce word potentially subjecting the claim terms to treatment under 35 U.S.C. § 112, ¶ 6, and only then to receive arguments from Petitioner on their construction. See Reh’g Req. 4 (“Without a predicate finding that § 112, ¶ 6 applies, the Petition’s silence on the identity of a ‘corresponding structure’ had no relevance to the issue of claim construction.” (emphasis added)). Our Rules do not require such a “predicate finding,” and we made no such finding regarding the construction of the “controller” terms. See Inst. Dec. 11 (“For the reasons set forth below, we do not need to construe this claim term or determine its definiteness.”). In the absence of arguments under the appropriate standard from at least Petitioner during the Preliminary Proceeding, we have no basis for construing the “controller” terms. See id. at 13–14 (“The analysis of Petitioner’s arguments regarding claims 1–3 begins and ends with Petitioner’s failure to provide constructions of the claim terms including “controller” under 35 U.S.C. § 112, ¶ 6, and we cannot evaluate Petitioner’s asserted ground with respect to claims 1–3 in the absence of such constructions.”).” slip op. at 6
- BurdenDecided for patent owner
“Under our Rules setting forth the requirements for the content of the petition, “[w]here the claim to be construed contains a means-plus-function . . . limitation as permitted under 35 U.S.C. [§ 112, ¶ 6], the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3) (emphasis added); see Inst. Dec. 13. Thus, where the challenged claim contains a means-plus-function limitation, the petition must provide a means-plus-function construction for that limitation. Consequently, it was not our task to determine first whether the word “controller” is a nonce word potentially subjecting the claim terms to treatment under 35 U.S.C. § 112, ¶ 6, and only then to receive arguments from Petitioner on their construction. See Reh’g Req. 4 (“Without a predicate finding that § 112, ¶ 6 applies, the Petition’s silence on the identity of a ‘corresponding structure’ had no relevance to the issue of claim construction.” (emphasis added)). Our Rules do not require such a “predicate finding,” and we made no such finding regarding the construction of the “controller” terms. See Inst. Dec. 11 (“For the reasons set forth below, we do not need to construe this claim term or determine its definiteness.”). In the absence of arguments under the appropriate standard from at least Petitioner during the Preliminary Proceeding, we have no basis for construing the “controller” terms. See id. at 13–14 (“The analysis of Petitioner’s arguments regarding claims 1–3 begins and ends with Petitioner’s failure to provide constructions of the claim terms including “controller” under 35 U.S.C. § 112, ¶ 6, and we cannot evaluate Petitioner’s asserted ground with respect to claims 1–3 in the absence of such constructions.”). It was Petitioner’s task to determine the necessary claim term constructions to support its request for inter partes review and to present those constructions as part of its Petition. Petitioner failed to do that here with respect to the “controller” terms. Thus, contrary to Petitioner’s assertion, we did not misapply the law governing interpretation of means- plus-function claim limitations; rather, due to the lack of any arguments or evidence from Petitioner, we did not and could not apply it at all. Consequently, we deny Petitioner’s request that we reconsider our Institution Decision and institute inter partes review of claims 1–3 of the ’371 patent.” slip op. at 6
- Strike new argumentNew argument disregardedDecided for patent owner
“It is hard to see where efficiency is achieved by having two tribunals simultaneously consider different claim constructions under the same standard.4 Nevertheless, we cannot find where Petitioner made this argument in its Petition or its Reply, nor does Petitioner identify where it previously raised this argument. See id. at 7–8; see also 37 C.F.R. § 42.71(d) (“The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.”). It goes without saying that we could not have overlooked or misunderstood an argument not made, and it is not an abuse of discretion not to consider such an argument.” slip op. at 11
Claim constructionPatents in suitUS 6,125,371 - Vision Industries Group, Inc. v. Mighton Products LimitedAll claims unpatentablePTAB · Sep 20, 2017 · IPR2016-00792 · APJ Robert L Kinder · IPR · Final written decision
Claims 1–50 are unpatentable: claims 1–10, 13–20, 23–36, and 38–50 are anticipated by Adams; the remaining claims are obvious over the stated combinations. The motion to amend is denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The levels of ordinary skill proposed by the parties do not differ significantly, as suggested by Mr. Carlson’s testimony that his opinions would be the same under either party’s proposal. See id. Both parties’ proposed descriptions require the equivalent of an undergraduate (four year) degree in mechanical technology, and both require at least two years of industry experience (although Patent Owner proposes three years). For purposes of this Decision, we adopt Petitioner’s proposed definition as more representative, but note that our analysis would be the same under either definition.” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed petitioner constructionDecided for petitioner
“Ex. 1001, 15:44–57. The function, according to Petitioner, is “selectively preventing movement of a first member that has a first surface substantially aligned in a first plane, relative to a second member that has a second surface substantially aligned in a second plane.” Pet. 15 (quoting claim 39). Petitioner contends that Figures 1 and 2 of the ’461 patent identify “a pivoting tab” as the structure performing the claimed function of preventing movement of the upper sash relative to the lower sash. Id.; Ex. 1007 ¶ 37. In our Decision on Institution, we agreed with Petitioner’s contention that “a pivoting tab” performs the claimed function. Dec. on Inst. 7–8. In its Response, Patent Owner has not challenged our determination. We do not perceive any reason or evidence that compels any deviation from our original interpretation. Accordingly, we adopt our previous analysis and conclusion as to the “means for selectively preventing movement of a first member.”” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“independent claims 1, 15, 26, and 39 should mean either “an element that exerts a restraining force against a biasing force” or, alternatively, “a latching mechanism.” Pet. 17. Patent Owner does not offer a proposed construction for this term. The term “restraining element” is not used in the ’461 patent, apart from the claims. The surrounding context of the claim language suggests the term is meant to be used interchangeably with the “latching mechanism” identified in the Specification. See Ex. 1001, 1:22– 32, 8:1–3. Compare id. at 1:32 (“The latching means may comprise magnetic means.”), with id. at 13:34–35 (“wherein the restraining element comprises a magnet”). Therefore, we construe “restraining element” to mean a latching mechanism, which “may be provided by any suitable releasable latching means.” Id. at 8:1–3.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Patent Owner’s first contention is based, in part, on an interpretation that would require the tab and restraining element be distinct components – an interpretation we have rejected for the reasons set forth above. As explained above, the Specification of the ’461 patent makes clear that the tab may include the latch. Adams also discloses a configuration where the tab (D) includes a latch (d3). See Pet. Reply 18 (“the fact that the tab D includes a latch d3 doesn’t make the latch indistinct from the tab”). Thus, we disagree that Petitioner has taken an inconsistent or changed position in its analysis.” slip op. at 23
Patent outcomesUS 8,881,461 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,881,461 - Texas Association Of Realtors v. Uber Technologies, Inc.All claims unpatentablePTAB · Aug 4, 2017 · IPR2016-00615 · APJ Robert L Kinder · IPR · Final written decision
Claims 1–28 are unpatentable under § 103(a); the contingent motion to amend is denied because substitute claims are obvious and lack written-description support.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“II. ANALYSIS Petitioner bears the burden of proving unpatentability of the challenged claims, and that burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner must establish the facts supporting its challenge by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). Petitioner relies on the Declaration of Michael Goodchild, Ph.D. (Ex. 1010) and the Reply Declaration of Dr. Goodchild (Ex. 1020). Patent Owner does not rely on any supporting declaration or cross-examination testimony. Below, we discuss whether Petitioner has met its burden with respect to claims 1–28. A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious to a person of ordinary skill in the art at the time the invention was made. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Obviousness is resolved based on underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness,2 i.e., secondary considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“First, Petitioner argues that based on the dictionary definition of “demarcate,” the broadest reasonable interpretation of “demarcating” is “‘to determine or mark off the boundaries or limits of’ something.” Id. (quoting Ex. 1013, RANDOM HOUSE WEBSTER’S UNABRIDGED DICTIONARY, (2d ed. 2001), 5); Ex. 1010 ¶¶ 35, 36. Next, Petitioner contends that the broadest reasonable interpretation of “delimiting” is “determining or marking off the boundaries or limits of something, such as by providing a perimeter line or highlighting.” Pet. 7; Ex. 1013, 4; Ex. 1010 ¶¶ 37–39. Petitioner reasons that the Specification provides examples of delimiting “via a perimeter line in any graphical way” and by highlighting. Pet. 7 (citing Ex. 1001, 6:34–39, 8:13–19). Patent Owner does not address these interpretations in its Response, but at oral hearing Patent Owner agrees that Petitioner’s interpretations were “a fair assessment.” Tr. 92:19–94:3. Patent Owner also responds that there was no substantive difference between the two terms – “demarcating” and “delimiting.” Id. at 93:19–29. Petitioner’s proposed interpretations for “demarcating” and “delimiting” are consistent with the claim language, written description of the ’045 patent, and the plain meaning of each term. We therefore interpret “demarcating” to mean “determining or marking off the boundaries or limits of something,” and interpret “delimiting” to mean “determining or marking off the boundaries or limits of something, such as by providing a perimeter line or highlighting.”” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art The parties do not argue in the Petition or Patent Owner Response that we should adopt a specific formulation regarding the level of ordinary skill in the art. Dr. Goodchild, however, testifies that a person of ordinary skill in the art at the time of the ’045 patent “would have had a Bachelor of Science degree (or its equivalent), and three years’ experience in the development, management, and use of geographic information systems and related geospatial technologies.” Ex. 1010 ¶ 14. Based on the record presented, including our review of the ’045 patent and the types of problems and solutions described in the ’045 patent and cited prior art, we agree with Dr. Goodchild’s assessment of the level of ordinary skill in the art and therefore adopt it for purposes of this Decision. As noted, we have also considered the cited references as representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the level of ordinary skill in the art may be evidenced by the cited references themselves).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner also provides a persuasive rationale for combining the teachings of O’Clair and Tadman. Id. at 9–10, 14–15. Specifically, Petitioner contends both references are in “similar fields,” with both references referring to the mapping application Google Maps, and [a] person of ordinary skill in the art would have found it obvious and desirable at the time of the ’045 Patent’s filing to combine the features of Tadman into O’Clair to achieve, for example, the ability for a “user to conduct a joint query by using both spatial and non-spatial searches” and the other “advanced features” described by Tadman. Id. at 9–10 (quoting Ex. 1010 ¶¶ 50–51). As further explained by Dr. Goodchild, “[t]he combination of O’Clair’s systems and methods with Tadman’s teachings of polygon-based search would yield the predictable and desirable result of a GIS [geographic information] system which allowed a user to obtain search results located with a polygon-shaped area of interest.” Ex. 1010 ¶ 52; see also Tr. 17:17–19:19. In its Response, Patent Owner does not contest Petitioner’s rationale for combining features of Tadman and O’Clair, nor does Patent Owner challenge Petitioner’s rationale for combining any of the prior art. See Tr. 38:21–39:33 (counsel for Patent Owner agreeing lack of motivation to combine is not argued in the Patent Owner Response). We find persuasive Petitioner’s arguments as to why a person of ordinary skill in the art would have had reason to combine the references’ teachings in the manner asserted.” slip op. at 15
Patent outcomesUS 8,510,045 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 8,510,045
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.