• Apple Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentable
  PTAB · Dec 5, 2022 · IPR2022-00362 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–3, 5–10, and 12–17 are unpatentable over Numazaki and Nonaka; claims 4, 11, and 18 were not shown unpatentable because the evidence did not establish the sensors were fixed relative to each other.

  RulingsFinal written decision

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

    “After institution, LG Electronics, Inc. and LG Electronics U.S.A., Inc. filed a petition and a motion for joinder to this proceeding. IPR2022-00092, Papers 1, 3. We granted the motion for joinder, and IPR2022-00092 was joined with this proceeding and dismissed. Paper 12, 11–12. In addition, Google LLC filed a petition and a motion for joinder to this proceeding. IPR2022-00362, Papers 2, 3. We granted the additional motion for joinder, and IPR2022-00362 was joined with this proceeding and dismissed. Paper 16, 5–6. Consequently, Apple Inc., LG Electronics, Inc., LG Electronics U.S.A., Inc., and Google LLC are joined in this proceeding.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person having ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction,” and “[a]dditional education or experience might substitute for the above requirements.” Pet. 5–6 (citing Ex. 1003 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s definition for the purposes of its Response. PO Resp. 5. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition.” slip op. at 8

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

    “C. Claim Construction In inter partes reviews, the Board interprets claim language using the district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19. capture command causes the digital camera to store an image to memory” in claim 1, “capturing an image to the digital camera in response to . . . the image capture command” in claim 8, and “correlate the gesture detected . . . with an image capture function and subsequently capture an image using the digital camera” in claim 13. Pet. 8. Specifically, Petitioner asserts that these phrases “should be construed broadly enough to encompass capturing/storing video or still images,” and provides reasons supporting its assertion. Id. at 8–10. Patent Owner does not contest Petitioner’s proposed claim constructions. PO Resp. 5. We agree with Petitioner’s supporting reasoning and accordingly adopt Petitioner’s proposed claim constructions.” slip op. at 8

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

    “We find that Petitioner’s Reply argument is not beyond the proper scope of a reply because it directly responds to Patent Owner’s argument that Petitioner does not explain how elements from both the third and fifth embodiments would accessed by the reflected light extraction unit and whether these elements would operate simultaneously or at different times. Moreover, Petitioner’s Reply argument elaborates on the contentions in the Petition that the gesture recognition would be implemented as a means of allowing the user to initiate the fifth videoconferencing functionality. Pet. 31; see Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F. 3d, 919, 925 (Fed. Cir. 2019) (“Parties are not barred from elaborating on their arguments on issues previously raised.”). Accordingly, we find that the Petition adequately explains how the reflected light extraction unit would be accessed by both the third embodiment’s shape interpretation unit 333 and the fifth embodiment’s extraction unit 353. We particularly credit Dr. Bederson’s uncontroverted testimony that “it would be well within the capabilities of a [person having ordinary skill in the art] to utilize the same output by two separate processing blocks to implement the proposed combination,” and one of ordinary skill in the art “would understand there are no technical barriers to arranging multiple distinct processing units that separately process the same output of a single unit.” See Ex. 1018 ¶ 9.” slip op. at 24

  Patent outcomesUS 8,878,949 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,878,949
• Apple Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentable
  PTAB · Dec 5, 2022 · IPR2022-00092 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–3, 5–10, and 12–17 are unpatentable as obvious over Numazaki and Nonaka; claims 4, 11, and 18 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction,” and “[a]dditional education or experience might substitute for the above requirements.” Pet. 5–6 (citing Ex. 1003 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s definition for the purposes of its Response. PO Resp. 5. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition. slip op. at 8

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

    “district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19. capture command causes the digital camera to store an image to memory” in claim 1, “capturing an image to the digital camera in response to . . . the image capture command” in claim 8, and “correlate the gesture detected . . . with an image capture function and subsequently capture an image using the digital camera” in claim 13. Pet. 8. Specifically, Petitioner asserts that these phrases “should be construed broadly enough to encompass capturing/storing video or still images,” and provides reasons supporting its assertion. Id. at 8–10. Patent Owner does not contest Petitioner’s proposed claim constructions. PO Resp. 5. We agree with Petitioner’s supporting reasoning and accordingly adopt Petitioner’s proposed claim constructions.” slip op. at 8

  • BurdenMixed

    “We agree with Patent Owner that the Petition does not establish sufficiently that Numazaki’s unit 102 and camera 351 are fixed relative to one another. Without more, the mere fact that unit 102 and camera 351 are arranged in parallel and have overlapping fields of view does not establish that the structures are fixed. At the oral hearing, counsel for Petitioner indicated that Petitioner’s position was not an inherency argument but relied on Dr. Bederson’s analysis and interpretation of Numazaki’s fifth embodiment. Tr. 17:7–15. The Petition, however, does not reference any such analysis in connection with the subject matter of claims 4, 11, and 18. 27–28 of the Petition, which pertain to limitation 1[(a)]) discuss the overlapping fields of view but not assert that overlapping fields of view require the structures to be fixed with respect to one another. For the foregoing reasons, we determine that Petitioner has not shown by a preponderance of the evidence that the combination of Numazaki and Nonaka renders obvious claims 4, 11, or 18.” slip op. at 34

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We find that Petitioner’s Reply argument is not beyond the proper scope of a reply because it directly responds to Patent Owner’s argument that Petitioner does not explain how elements from both the third and fifth embodiments would accessed by the reflected light extraction unit and whether these elements would operate simultaneously or at different times. Moreover, Petitioner’s Reply argument elaborates on the contentions in the Petition that the gesture recognition would be implemented as a means of allowing the user to initiate the fifth videoconferencing functionality. Pet. 31; see Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F. 3d, 919, 925 (Fed. Cir. 2019) (“Parties are not barred from elaborating on their arguments on issues previously raised.”). Accordingly, we find that the Petition adequately explains how the reflected light extraction unit would be accessed by both the third embodiment’s shape interpretation unit 333 and the fifth embodiment’s extraction unit 353. We particularly credit Dr. Bederson’s uncontroverted testimony that “it would be well within the capabilities of a [person having ordinary skill in the art] to utilize the same output by two separate processing blocks to implement the proposed combination,” and one of ordinary skill in the art “would understand there are no technical barriers to arranging multiple distinct processing units that separately process the same output of a single unit.” See Ex. 1018 ¶ 9.” slip op. at 24

  Patent outcomesUS 8,878,949 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,878,949
• Apple Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentable
  PTAB · Dec 5, 2022 · IPR2021-00921 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–3, 5–10, and 12–17 are unpatentable as obvious over Numazaki and Nonaka; claims 4, 11, and 18 were not shown unpatentable.

  RulingsFinal written decision

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

    “We find that Petitioner’s Reply argument is not beyond the proper scope of a reply because it directly responds to Patent Owner’s argument that Petitioner does not explain how elements from both the third and fifth embodiments would accessed by the reflected light extraction unit and whether these elements would operate simultaneously or at different times. Moreover, Petitioner’s Reply argument elaborates on the contentions in the Petition that the gesture recognition would be implemented as a means of allowing the user to initiate the fifth videoconferencing functionality. Pet. 31; see Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F. 3d, 919, 925 (Fed. Cir. 2019) (“Parties are not barred from elaborating on their arguments on issues previously raised.”). Accordingly, we find that the Petition adequately explains how the reflected light extraction unit would be accessed by both the third embodiment’s shape interpretation unit 333 and the fifth embodiment’s extraction unit 353. We particularly credit Dr. Bederson’s uncontroverted testimony that “it would be well within the capabilities of a [person having ordinary skill in the art] to utilize the same output by two separate processing blocks to implement the proposed combination,” and one of ordinary skill in the art “would understand there are no technical barriers to arranging multiple distinct processing units that separately process the same output of a single unit.” See Ex. 1018 ¶ 9.” slip op. at 24

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

    “We agree with Patent Owner that the Petition does not establish sufficiently that Numazaki’s unit 102 and camera 351 are fixed relative to one another. Without more, the mere fact that unit 102 and camera 351 are arranged in parallel and have overlapping fields of view does not establish that the structures are fixed. At the oral hearing, counsel for Petitioner indicated that Petitioner’s position was not an inherency argument but relied on Dr. Bederson’s analysis and interpretation of Numazaki’s fifth embodiment. Tr. 17:7–15. The Petition, however, does not reference any such analysis in connection with the subject matter of claims 4, 11, and 18. 27–28 of the Petition, which pertain to limitation 1[(a)]) discuss the overlapping fields of view but not assert that overlapping fields of view require the structures to be fixed with respect to one another. For the foregoing reasons, we determine that Petitioner has not shown by a preponderance of the evidence that the combination of Numazaki and Nonaka renders obvious claims 4, 11, or 18. 6. Dependent Claims 2, 3, 5–7, 9, 10, 12, and 14–17 Petitioner provides reasonable and detailed explanations, supported by the testimony of Dr. Bederson, indicating where in the references the limitations of claims 2, 3, 5–7, 9, 10, 12, and 14–17 are disclosed. Pet. 33– 43, 44, 47, 49. Further, Patent Owner offers no arguments particularly directed to these dependent claims. PO Resp. 22, 25, 28. We have considered the evidence and arguments of record and determine that Petitioner has demonstrated by a preponderance of the evidence that the combination of Numazaki and Nonaka renders obvious claims 2, 3, 5–7, 9, 10, 12, and 14–17 for the reasons discussed in the Petition and as supported by the testimony of Dr. Bederson.” slip op. at 34

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

    “After institution, LG Electronics, Inc. and LG Electronics U.S.A., Inc. filed a petition and a motion for joinder to this proceeding. IPR2022-00092, Papers 1, 3. We granted the motion for joinder, and IPR2022-00092 was joined with this proceeding and dismissed. Paper 12, 11–12. In addition, Google LLC filed a petition and a motion for joinder to this proceeding. IPR2022-00362, Papers 2, 3. We granted the additional motion for joinder, and IPR2022-00362 was joined with this proceeding and dismissed. Paper 16, 5–6. Consequently, Apple Inc., LG Electronics, Inc., LG Electronics U.S.A., Inc., and Google LLC are joined in this proceeding.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction,” and “[a]dditional education or experience might substitute for the above requirements.” Pet. 5–6 (citing Ex. 1003 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s definition for the purposes of its Response. PO Resp. 5. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition. slip op. at 8

  Patent outcomesUS 8,878,949 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,878,949
• Apple, Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCNo claims unpatentable
  PTAB · Dec 2, 2022 · IPR2022-00361 · APJ Brent M Dougal · IPR · Final written decision

  The Board held claims 1–14 not shown unpatentable because Mann was not established as analogous art and the asserted obviousness grounds all relied on Mann.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(‘PHOSITA’) at the time of the ’924 Patent would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 5 (citing Ex. 1003 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. PO Resp. 7. We are persuaded, on the present record, that Petitioner’s declarant’s statement is consistent with the problems and solutions in the ’924 patent and prior art of record. We adopt this definition for the purposes of this Decision.” slip op. at 7

  • Obviousness (§103) › Analogous artNon analogous artNot shown unpatentable

    “A reference qualifies as prior art for an obviousness determination only when it is analogous to the claimed invention. See In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). The Federal Circuit has laid out two separate tests to determine whether a reference is analogous art to the claimed invention, i.e., whether one of ordinary skill in the art would even look to the 2004). They are: “(1) whether the art is from the same field of [the inventor’s] endeavor” and “(2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Id.; see also In re Klein, 647 F.3d at 1348. Petitioner only addresses the first test (“field of endeavor”) and has thus waived any arguments related to the second test (“reasonably pertinent to the particular problem”).” slip op. at 10

  • BurdenNot shown unpatentable

    “For all of these reasons, Petitioner has not established by a preponderance of the evidence that Mann is analogous art to the ’924 patent. Nor has Petitioner established that Mann is a proper reference for use in an obviousness challenge. d) Conclusion for Claims 1–6, 11, 14 As Petitioner has not established that Mann is a proper reference for use in an obviousness challenge, Petitioner has not established by a preponderance of the evidence that claims 1–6, 11, and 14 are obvious over the combination of Mann and Numazaki.” slip op. at 16

  Patent outcomesUS 8,194,924 not shown unpatentable
  § 103 obviousness
  Patents in suitUS 8,194,924
• Apple, Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCNo claims unpatentable
  PTAB · Dec 2, 2022 · IPR2022-00093 · APJ Brent M Dougal · IPR · Final written decision

  Claims 1–14 were not shown unpatentable because Mann was not established as analogous art and thus was not a proper reference for the asserted obviousness combinations.

  RulingsFinal written decision

  • Obviousness (§103) › Analogous artNon analogous artNot shown unpatentableNot shown unpatentable

    “A reference qualifies as prior art for an obviousness determination only when it is analogous to the claimed invention. See In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). The Federal Circuit has laid out two separate tests to determine whether a reference is analogous art to the claimed invention, i.e., whether one of ordinary skill in the art would even look to the 2004). They are: “(1) whether the art is from the same field of [the inventor’s] endeavor” and “(2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Id.; see also In re Klein, 647 F.3d at 1348. Petitioner only addresses the first test (“field of endeavor”) and has thus waived any arguments related to the second test (“reasonably pertinent to the particular problem”).” slip op. at 10

  • BurdenNot shown unpatentable

    “For all of these reasons, Petitioner has not established by a preponderance of the evidence that Mann is analogous art to the ’924 patent. Nor has Petitioner established that Mann is a proper reference for use in an obviousness challenge. d) Conclusion for Claims 1–6, 11, 14 As Petitioner has not established that Mann is a proper reference for use in an obviousness challenge, Petitioner has not established by a preponderance of the evidence that claims 1–6, 11, and 14 are obvious over the combination of Mann and Numazaki.” slip op. at 16

  Patent outcomesUS 8,194,924 not shown unpatentable
  § 103 obviousness
  Patents in suitUS 8,194,924
• Apple, Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCNo claims unpatentable
  PTAB · Dec 2, 2022 · IPR2021-00923 · APJ Brent M Dougal · IPR · Final written decision

  Claims 1–14 were not shown unpatentable because Mann was not established as analogous art and a proper reference for the obviousness challenges.

  RulingsFinal written decision

  • Obviousness (§103) › Analogous artNon analogous artNot shown unpatentableNot shown unpatentable

    “A reference qualifies as prior art for an obviousness determination only when it is analogous to the claimed invention. See In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). The Federal Circuit has laid out two separate tests to determine whether a reference is analogous art to the claimed invention, i.e., whether one of ordinary skill in the art would even look to the 2004). They are: “(1) whether the art is from the same field of [the inventor’s] endeavor” and “(2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Id.; see also In re Klein, 647 F.3d at 1348.” slip op. at 10

  Patent outcomesUS 8,194,924 not shown unpatentable
  § 103 obviousness
  Patents in suitUS 8,194,924
• Abbott Diabetes Care Inc. v. Dexcom, Inc.Instituted
  PTAB · Nov 3, 2022 · IPR2022-00922 · APJ Mitchell G Weatherly · IPR · Institution

  The Board instituted IPR on claims 10, 38, and 101 on all asserted grounds, finding a reasonable likelihood that claim 10 is unpatentable over Heller.

  RulingsInstitution decision

  • Parallel petitionsDenied

    “This summary reflects that the pair of petitions do not overlap in the claims challenged, but rather overlap in the sense that both petitions include two “families” of challenges to claims, Heller-based challenges and Gross-based challenges. Patent Owner argues that Petitioner should have presented its Heller-based challenges in one petition and the Gross-based challenges in another petition so that we could have separately decided whether to institute review of each family of challenges. Patent Owner’s argument has merit insofar as presenting each family of challenges against all 11 of the claims that are collectively challenged may have resulted in fewer words overall. We would have preferred Patent Owner’s suggested approach. Nevertheless, we institute review in both proceedings for two primary reasons. First, we find Petitioner’s explanation for why it could not fit both families of challenges into the word-count allocated to one petition reasonable. For example, Petitioner spent a substantial portion of its allocated word-count addressing issues of discretionary denial under §§ 314 and 325(d) on the chance that Patent Owner would request such a denial. See, e.g., Pet. 80–88. Doing so, trimmed the space available to address the merits of its challenges, the subject matter that forms the basis of inter partes review. Ultimately, Patent Owner chose not to request discretionary denial on the issues Petitioner addressed. We consider it reasonable for Petitioner to have used space to address these issues of discretionary denial, with the result that addressing all issues of patentability could not fit in one petition. Petitioner also devoted considerable space explaining the relevant prosecution history and educating the panel on concepts that were within the background knowledge of an ordinarily skilled artisan relating to calibration of glucose monitoring devices and methods. Pet. 8–15, 30–35. These portions of the Petition provide critical context for deciding the merits of all the challenges presented. The merits of Petitioner’s challenges as collectively presented in the ’921 Petition and this Petition warrant an inter partes review, and a trial will resolve the dispute over all those challenges with estoppel effect. Second, we find that material differences exist between the Heller- based and Gross-based challenges that require independent analyses. These material differences are apparent from even a high-level review of the arguments presented in the Petitions and Preliminary Responses. We agree with Patent Owner that substantial overlap exists between the two Petitions when comparing the Heller-based challenges in the two petitions or the Gross-based challenges in the two petitions. Ranking Resp. 2–3. But this overlap reduces the burden that the Patent Owner will bear in responding to those challenges and the burden that we will face in adjudicating them. Accordingly, we discern no undue burden placed upon us or the parties in having a trial in both proceedings so that the merits of the Heller-based and Gross-based challenges can be resolved with estoppel effect by a final written decision. Collectively, the two petitions reasonably challenge the patentability of 11 claims based on two different primary references. We discern nothing unusual about the scope of this dispute that justifies considering only the challenges set forth in the ’921 Petition.” slip op. at 8

  • BurdenDecided for petitioner

    “Regarding Patent Owner’s first argument, Petitioner persuades us that Heller’s “factory-determined calibration measurements” are reasonably likely to constitute “prior calibration information” that includes “prior sensitivity information associated with the transcutaneous glucose sensor.” First, that the calibration measurements are “factory-determined” implies “prior” generation of the information. Second, Heller expressly describes its processing circuit 109 using this calibration data to “correct signals from sensor 42.” Ex. 1005, 77:6–7. Second, Dr. Smith strongly supports his testimony regarding what an ordinarily skilled artisan “would have recognized” about Heller’s calibration measurements by citing numerous examples of objective evidence that appear to be highly probative based on our initial review. Third, Patent Owner offers no expert testimony at all much less testimony that refutes Dr. Smith’s opinion or establishes that the objective evidence upon which he relies fails to support his opinion. Instead, Patent Owner merely responds with argument from its attorneys and their implied opinion about what an ordinarily skilled artisan “would have recognized” about Heller’s factory-determined calibration measurements. Accordingly, we find Dr. Smith’s testimony to be unopposed at this stage of the proceeding and more than sufficient to meet Petitioner’s burden to establish a reasonable likelihood that Heller describes limitation 10d.” slip op. at 21

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner

    “of the challenged claims expressly recites “means” and all are presumed not to contain terms that are subject to interpretation under § 112, ¶ 6. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc). The Federal Circuit explained the procedure for rebutting the presumption against interpreting a claim term that does not recite “means” as a means-plus-function limitation as follows: The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. . . . When a claim term lacks the word “means,” the presumption can be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails to “recite sufficiently definite structure” or else recites “function without reciting sufficient structure for performing that function.” Id. at 1349 (internal citations omitted). At this stage of the proceeding, neither party has presented evidence probative of whether an ordinarily skilled artisan would understand “processor programmed to calibrate . . .” as recited in claim 1 has a “sufficiently definite meaning as the name for structure.” In the absence of such evidence, we must presume that the term is not interpreted as a means-plus-function limitation, just as Petitioner proposes. See Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 1008 (Fed. Cir. 2018) (vacating conclusion that “program that can operate” and “code being configured to” were means-plus-function limitations when challenger failed to adduce evidence probative of the understanding of ordinarily skilled artisan). We discern no requirement in Rule 42.104(b)(3) to require Petitioner to advance” slip op. at 12

  • Other 314aInstitution denied discretionary otherDenied

    “Recognizing that the briefing and evidence before us may not result in a violation of Rule 42.104(b) because the parties place no issue in dispute on whether § 112, ¶ 6 applies, the dissent concludes that we should deny the Petition in our discretion. The exercise of discretion would be warranted to promote the interests of: “efficiency in the patent system, improvement of patent quality, and reduction of counterproductive litigation costs.” Dissent 11–12. We disagree. The District Court of Delaware has stayed its consideration of all issues of patent infringement, patent invalidity, and unenforceability pending resolution of Petitioner’s defense of non-infringement due to license and counterclaim for breach of license. Ex. 1089, 2. Trial in the District Court on the issues not stayed has been set for July 10, 2023. Id. at 12. In effect, the District Court of Delaware likely will not reach the merits of Petitioner’s obviousness arguments until after we enter a final written decision in this proceeding. Petitioner provides the evidence necessary to decide the issues it has presented, and Patent Owner will have a full and fair opportunity to meet that evidence. If Patent Owner wishes to make a case that § 112, ¶ 6 applies to the processor limitations, it is free to do so. After we enter a final written decision, Petitioner will be estopped under 35 U.S.C. § 315(e) from litigating an invalidity defense that it raised or could have raised before us. Assuming that Petitioner were to press an indefiniteness defense based on § 112, ¶ 6 applied to the processor limitations in the District Court, that Court will be able to decide whether positions taken by Petitioner before us would preclude it from advancing that defense in that forum. Simply, we find it to be most efficient for us to resolve the issues of patentability presented by both parties during a trial before the Board and for the District Court to resolve the legal issues presented by the parties in that forum when the time comes, which will exclude invalidity defenses that were or could have been raised by Petitioner here. For all these reasons, we do not discretionarily deny the Petition. D. Legal Standards” slip op. at 15

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 10,993,642
• Abbott Diabetes Care Inc. v. Dexcom, Inc.Instituted
  PTAB · Nov 3, 2022 · IPR2022-00921 · APJ Mitchell G Weatherly · IPR · Institution

  Instituted IPR on all challenged claims and grounds after finding a reasonable likelihood that claim 1 would be unpatentable as obvious over Heller and Flaherty.

  RulingsInstitution decision

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

    “(Paper 5, “Pet.”) to institute an inter partes review of claims 1, 5, 7, 8, 66, 67, 89, and 91 (the “challenged claims”) of U.S. Patent No. 10,993,642 B2 (Ex. 1001, “the ’642 patent”). 35 U.S.C. § 311. DexCom, Inc. (“Patent Owner”) timely filed a Preliminary Response. Paper 11 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Based on our review of the record, we conclude that Petitioner is reasonably likely to prevail with respect to at least one of the challenged claims.” slip op. at 2

  • BurdenDecided for petitioner

    “(1) Heller does not expressly describe “prior calibration information generated before insertion” that “comprises prior sensitivity information,” Prelim. Resp. 19–22; (2) Dr. Smith’s testimony regarding what an ordinarily skilled artisan would have “recognized” about Heller’s “factory-determined calibration measurements” impermissibly modifies Heller without identifying differences between Heller and the other prior art cited by Dr. Smith and fails to demonstrate any motivation for modifying Heller, id. at 23–25; and (3) Petitioner fails to prove that an ordinarily skilled artisan would have had a reasonable expectation of succeeding in modifying Heller, id. at 25–26. None of Patent Owner’s arguments are persuasive on the record before us.” slip op. at 18

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner

    “Second, claim 1 does not expressly recite “means” and is thus presumed not to be subject to interpretation as a means-plus-function limitation. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc). The Federal Circuit explained the procedure for rebutting the presumption against interpreting a claim term that does not recite “means” as a means-plus-function limitation as follows:” slip op. at 9

  • Strike new argumentNot reached
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,993,642
• Abbott Diabetes Care Inc. v. Dexcom, Inc.Institution denied
  PTAB · Nov 3, 2022 · IPR2022-00917 · APJ Frederick C Laney · IPR · Institution

  The Board denied institution on all challenged claims and grounds because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable.

  RulingsInstitution decision

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

    “partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The Board determines whether to institute a trial on behalf of the Director. 37 C.F.R. § 42.4(a). A decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition.” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018). For the reasons set forth below, we determine that Petitioner has not demonstrated that there is a reasonable likelihood that at least one of the challenged claims is unpatentable. Accordingly, we do not institute an inter partes review of the challenged claims in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “ordinary skill in the art at the relevant time would have had a “bachelor’s degree in biomedical engineering, mechanical engineering, chemical engineering, or materials science and engineering (or a related or equivalent field), and two or more years of experience researching, developing, designing, and/or evaluating (or supervising the same) medical devices for measuring analyte levels, e.g., analyte sensors, or equivalent experience.” Pet. 12 (citing Ex. 1003 ¶¶ 17–21). Patent Owner does not dispute or address this characterization of the skill level of an artisan in the relevant field. See generally Prelim. Resp. On this record, Petitioner’s proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’452 patent and the asserted prior art references. Okajima, 261 F.3d at 1355. For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 12

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

    “given their plain and ordinary meaning.” Pet. 30. Presumably because the plain meaning applicable to all of the claim terms in the ’452 patent is readily apparent, Petitioner does not provide any particular construction for any of the claim terms. See generally id. Patent Owner likewise offers no particular construction for any of the claim terms. See generally Prelim. Resp. Patent Owner does argue, however, that the claimed inventions (specifically, independent claims 1, 19, and 62) are distinguishable from the various structural configurations Petitioner relies upon in the prior art when the plain meaning of “over” and “at least partially surrounds” are applied appropriately. See Prelim. Resp. 39–46. Thus, rather than disputing the meaning Petitioner proposes for the claim terms, Patent Owner disputes whether Petitioner properly applied the plain meaning of all the claim terms in the unpatentability contentions that the Petition presents. Claims are construed only to the extent necessary to resolve a dispute. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Here, both parties rely on the plain and ordinary meaning for all of the terms used in the claims challenged in the Petition and neither party suggests a particular meaning beyond what is clearly conveyed by the claim terms in the context of the ’452 patent. Therefore, we need not construe expressly any of the claim terms.” slip op. at 13

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

    “We agree with Patent Owner that Petitioner has not shown sufficiently that Cheney/Lord discloses a sealing member that is at least partially located over the contact holder. Cheney’s Figure 2 and 3 show connector block 26, which Petitioner alleges is a sealing member, as being supported solely by its sides within aperture 40 of housing member 34, which Petitioner alleges is a contact holder, and no portion of the connector block 26 is above or over any portion of housing member 34. Petitioner has not demonstrated sufficiently that the plan and ordinary meaning of the term “over” in the context of the ’452 patent would have been understood to encompasses such a configuration.” slip op. at 23

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,980,452
• Abbott Diabetes Care Inc. v. Dexcom, Inc.Institution denied
  PTAB · Nov 3, 2022 · IPR2022-00918 · APJ Frederick C Laney · IPR · Institution

  The Board denied institution on all challenged claims because the petition did not show a reasonable likelihood that any challenged claim was unpatentable under the asserted obviousness grounds.

  RulingsInstitution decision

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

    “partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The Board determines whether to institute a trial on behalf of the Director. 37 C.F.R. § 42.4(a). A decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition.” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018). For the reasons set forth below, we determine that Petitioner has not demonstrated that there is a reasonable likelihood that at least one of the challenged claims is unpatentable. Accordingly, we do not institute an inter partes review of the challenged claims in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts, with the support of its expert, that a person of ordinary skill in the art at the relevant time would have had a “bachelor’s degree in biomedical engineering, mechanical engineering, chemical engineering, or materials science and engineering (or a related or equivalent field), and two or more years of experience researching, developing, designing, and/or evaluating (or supervising the same) medical devices for measuring analyte levels, e.g., analyte sensors, or equivalent experience.” Pet. 11 (citing Ex. 1003 ¶¶ 17–21). Patent Owner does not dispute or address this characterization of the skill level of an artisan in the relevant field. See generally Prelim. Resp. On this record, Petitioner’s proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’452 patent and the asserted prior art references. Okajima, 261 F.3d at 1355. For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 12

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

    “Petitioner contends that, for its Petition, all claim terms “should be given their plain and ordinary meaning.” Pet. 27. Presumably because the plain meaning applicable to all of the claim terms in the ’452 patent is readily apparent, Petitioner does not provide any particular construction for any of the claim terms. See generally id. Patent Owner likewise offers no particular construction for any of the claim terms. See generally Prelim. Resp. Patent Owner does argue, however, that the claimed inventions (specifically, independent claim 41) are distinguishable from the various structural configurations Petitioner relies upon in the prior art when the plain meaning of “over” and “at least partially surrounds” are applied appropriately. See Prelim. Resp. 16–31. Thus, rather than disputing the meaning Petitioner proposes for the claim terms, Patent Owner disputes whether Petitioner properly applied the plain meaning of all the claim terms in the unpatentability contentions that the Petition presents. Claims are construed only to the extent necessary to resolve a dispute. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Here, both parties rely on the plain and ordinary meaning for all of the terms used in the claims challenged in the Petition and neither party suggests a particular meaning beyond what is clearly conveyed by the claim terms in the context of the’452 patent. Therefore, we need not construe expressly any of the claim terms.” slip op. at 13

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

    “We find merit in Patent Owner’s arguments. When considering the disclosures of Cheney, Lord, and Shah in their entirety, as we must, we are not persuaded Petitioner has identified sufficiently a rational underpinning that supports the reasoning for why a skilled artisan would have modified Cheney/Lord in the manner claimed. Petitioner proposes modifying Cheney/Lord by adding a sealing layer, such as the one Shah discloses, to the opposite side of the sensor proximal segment 20 that is connected to connector block 26 to further enhance the seal around the sensor and provide the sensor additional protection against moisture. At first glance this may seem like a valid reason, but further inspection of Cheney, Lord, and Shah demonstrates that those references provide no evidentiary support for the alleged reason. Cheney/Lord describe the sensor proximal segment 20 as being a flexible thin film sensor including elongated thin film conductors embedded or encased between upper and lower layers of insulative material, which has openings for exposing the conductive contact pads 22 that electrically interconnect with the corresponding connective strips 40 in connector block 26, which sealingly engages with sensor proximal segment 20 to hermetically seal the contact pads against moisture ingress. Ex. 1006, 2:11– 23, 3:16–24, 3:34–40, 3:51–4:3; Ex. 1005, 1:33–42, 3:45–57. We find nothing in Cheney/Lord that even suggests a skilled artisan would have had a need for improving the sealing characteristics of the insulative material on the side of the sensor proximal segment 20 that is opposite of the side connected to connector block 26. On the contrary, Cheney/Lord teaches that a hermetic seal can be created by connecting connector block 26 to only the side of the sensor proximal segment 20 with exposed conductive contact pads 22; Cheney/Lord teaches that the other side is already fully embedded or encased within an insulative material. Shah is no more availing as evidence supporting Petitioner’s reasoning. Rather than suggesting a need to further enhance the seal covering the sensor proximal segment 20 on the side opposite of the side with exposed conductive contact pads 22, Shah teaches that it sealing layer 25 is intended “to seal the location where the needle penetrates” mounting base 10 to reach the infusion site and provide “a more sanitary infusion site by keeping the infusion site insulated.” Ex. 1019 ¶ 39, Figs. 2, 3B. As Patent Owner correctly argues, Petitioner’s proposed modification would completely thwart the ability of sealing layer 25 to perform that intended function because the sensor proximal segment 20 is located a significant distance away from the needle penetration area, thus, preventing sealing layer 25 from offering any insulating protection to the infusion site. And contrary to suggesting adding a sealing layer to the unexposed side of the sensor proximal segment 20, Shah suggests there is no importance to having a sealing layer over the sensor’s unexposed side by stating that sealing layer 25 “may be located so that it is only covering the needle insertion area.” Ex. 1019 ¶ 39 (emphasis added). Mr. Leinsing also offers little, if any, support to Petitioner’s reasoning. In fact, the declaration of Mr. Leinsing is largely duplicative of the contentions Petitioner argues in the Petition. Compare Pet. 60–64 with Ex. 1003 ¶¶ 376–388. Most notably, Mr. Leinsing does not even suggest (let alone provide a reasoned basis to show) a skilled artisan would have appreciated the need to further tighten/enhance the seal above the sensor and connector block in Cheney/Lord and provide additional protection of the sensor/connector against moisture; instead, Mr. Leinsing simply states “it would have been obvious to use the sealing layer of Shah on the opposite side of the sensor from Cheney/Lord’s connector block to further tighten/enhance the seal around the sensor and thus provide additional protection of the sensor/connector against moisture.” Ex. 1003 ¶ 386. As a result, we give little persuasive weight to the testimony of Mr. Leinsing. Therefore, we find Petitioner has not demonstrated sufficiently a reasonable likelihood of proving that Cheney/Lord in view of Shah discloses a seal member that “at least partially surrounds the electrical contact and at least a portion of the transcutaneous glucose sensor when the transcutaneous glucose sensor is operably connected to the sensor electronics,” as recited in independent claim 41. Furthermore, as noted above, Petitioner’s contentions regarding the Lord/Shah combination is substantively the same and, as such, the same reasons and result apply.” slip op. at 29

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,980,452

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.