• The Boeing Company v. Seymour LevineAll claims unpatentable
  PTAB · Dec 20, 2016 · IPR2015-01341 · APJ Trenton A Ward · IPR · Final written decision

  Claims 4, 5, 8, 9, 10, 14, and 16 are unpatentable as obvious under § 103 over the combinations listed in the decision.

  RulingsFinal written decision

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

    “The definition of “advice” is “information or notice given.” Ex. 3001 (Webster’s Third New International Dictionary 32 (1971), 3.). Thus, the plain and ordinary meaning of “maintenance advice” is consistent with the aforementioned evidence, in that “maintenance advice” can include maintenance information, but does not require “recommended maintenance actions.” Patent Owner argues that this dictionary definition cited by the Board includes an alternative definition of “advice” as a “recommendation regarding a decision or course of conduct.” PO Resp. 33 (citing Ex. 3001, 3). Patent Owner further argues that this alternative definition of “advice” is most consistent with specification. PO Resp. 33. Patent Owner fails, however, to cite to any portions of the specification to support this argument (see id.) and fails to explain why we should not be guided by the more general statements in the specification, such as the description in the specification that a “preferred maintenance advisory” can be based “on an expert system for fault isolation,” which is in no way “recommended maintenance actions.” Ex. 1001, 3:36–37. We are not persuaded by Patent Owner’s argument that “maintenance advice” must include recommended maintenance actions. Accordingly, we adopt the portion of the proposed definitions on which the parties agree and determine that the term “maintenance advice” means “problem-specific maintenance information.” See also Dec. 7–8.” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “skill in the art relevant to the ’618 patent would have a “B.S. degree in electrical, systems, or computer engineering, or an FAA Mechanic Certificate with an airframe rating in accordance with 14 CFR part 65.71 and 65.85.” Ex. 1002 ¶ 15. According to Patent Owner’s Declarant, Mr. Grabowsky, a person of ordinary skill in the art relevant to the ’618 patent would have “at least a B.S. degree in electrical, systems, or computer engineering, or an FAA Mechanic Certificate with an airframe rating in accordance with 14 CFR part 65.71 and 65.85; as well as either an M.S. or equivalent work experience, such as 3-5 years of experience in avionics.” Ex. 2011 ¶ 8. Thus, both declarants generally agree on the level of skill, although Mr. Grabowsky suggests experience is required in addition to the B.S. degree or the FAA Mechanic Certificate. See id. Based on our review of the ’618 patent, the types of problems and solutions described in the ’618 patent and cited prior art, and the testimony of Petitioner’s Declarant and Patent Owner’s Declarant, we adopt Petitioner’s definition of a person of ordinary skill in the art at the time of the claimed invention. We are not persuaded that the additional experience of an M.S. or equivalent work experience, such as 3-5 years of experience in avionics, is required, as suggested by Mr. Grabowsky, as we are unclear as to why the claimed subject matter is beyond the abilities of someone who otherwise meets applicable federal regulatory standards. Based on the stated qualifications of Dr. Helfrick (Ex. 1002 ¶¶ 5–9) and the stated qualifications of Mr. Grabowsky (Ex. 2011 ¶¶ 6–7), Petitioner’s Declarant and Patent Owner’s Declarant both meet the requirements of this definition. We note that the applied prior art also reflects the appropriate level of skill at the time of the claimed invention. See Okajima, 261 F.3d at 1355.” slip op. at 12

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

    “and ARINC 624-1 because ARINC 624-1 is a standard directed to the very types of on-board systems discussed in Ward.”)). Additionally, Petitioner contends that ARINC publishes standards for the aviation industry, developed by committees that include aircraft manufacturers, avionics manufacturers, and airlines, and that the ACARS transmitter disclosed in Ward is based on, and, thus, would follow, an ARINC standard. Pet. 30 (citing Ex. 1002 ¶¶ 23, 75). Also, Petitioner contends that both Ward and ARINC 624-1 discuss utilizing (1) onboard maintenance systems including ACMS to collect aircraft performance data and (2) an ACARS transmitter to transmit such data to a ground station. Pet. 30. Petitioner adds that ARINC 624-1 provides an explicit motivation to utilize Ward’s ground based maintenance analysis software in implementing its maintenance system, because ARINC 624-1 states that “if known in advance of an airplane’s arrival at a terminal, selected information held in the OMS central maintenance computer’s memory could be useful to line maintenance personnel in planning timely corrective action.” Pet. 30–31 (quoting Ex. 1014 § 2.2.4). We agree, for the reasons stated by Petitioner, that, given the similarity and overlap in disclosures, and applicability of the ARINC standard to the ACARS transmitter of Ward, a person of skill in the art would have been motivated to improve the system in Ward with the teachings in ARINC 624-1. In view of the foregoing, we determine Petitioner has presented and sufficiently established an “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness” with respect to claim 4 for this ground, and we adopt its contentions as our own. KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 21

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

    “on an aircraft having a flight data recorder.” Pet. Reply 15.10 Furthermore, Petitioner identifies that claims 8–10 all require “aircraft position data directed to said flight data recorder.” Id. Petitioner argues that Mr. Levine’s October 9, 1996 Invention Disclosure is insufficient, because it does not reflect the conception of the invention that Patent Owner ultimately claimed, which requires two data recorders—one onboard the aircraft and a second, remote recorder on the ground. Id. We do not agree with Petitioner’s argument that claims 4 and 8–10 require a flight data recorder on the ground, as claim 4 merely recites a “central station” “configured to receive and analyze said digital aircraft performance.” We do agree, however, with Petitioner’s argument that the express language of independent claim 4 requires “an aircraft having a flight data recorder.” Furthermore, claim 4 requires that the “digital aircraft performance data,” which the “central station” is configured to receive and analyze, is “data directed to the flight data recorder.” Thus, the invention recited in independent claim 4, and its dependent claims, must include a flight data recorder onboard the aircraft and, separately, a central station configured to receive and analyze data directed to the onboard flight data recorder. 10 The recitation “[a]n aircraft maintenance system for use on an aircraft having a flight data recorder” appears in the preamble of claim 4. “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Marketing Int’l., Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). Here, the body of claim 4 refers to “the flight data recorder” as an active limitation in the claim. Therefore, we determine that the preamble is limiting for claim 4.” slip op. at 31

  Patent outcomesUS RE39,618 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
• Microsoft Corp. v. Windy City Innovations LLCInstitution denied
  PTAB · Nov 29, 2016 · IPR2016-01138 · APJ Karl D Easthom · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 18–49, 54–57, and 59–63 would have been obvious over Brown and Tang.

  RulingsInstitution decision

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

    “alternatives” to allow members in “at least one group . . . [to] send communications and receive communications . . . wherein at least some of the communications are received in real time via the Internet network.” See, e.g., Ex. 1001, 23:59–67 (emphases added). Here, “wherein at least some of the communications are received in real time” refers to the communications sent and received by members of “at least one group.” Claim 1 is clear that both client software alternatives must “allow at least some of the participator computers to form at least one group in which members can send communications and receive communications.” Thus, the communications in a group pursuant to each of the client software alternatives must include real-time communications.” slip op. at 9

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

    “alternatives” to allow members in “at least one group . . . [to] send communications and receive communications . . . wherein at least some of the communications are received in real time via the Internet network.” See, e.g., Ex. 1001, 23:59–67 (emphases added). Here, “wherein at least some of the communications are received in real time” refers to the communications sent and received by members of “at least one group.” Claim 1 is clear that both client software alternatives must “allow at least some of the participator computers to form at least one group in which members can send communications and receive communications.” Thus, the communications in a group pursuant to each of the client software alternatives must include real-time communications.” slip op. at 9

  § 103 obviousness
  Patents in suitUS 8,473,552
• Telebrands Corp. v. Ragner Technology CorporationInstitution denied
  PTAB · Nov 23, 2016 · PGR2016-00026 · APJ Michael W Kim · PGR · Institution

  The Board denied institution because the petition did not show that claims 1–25 were more likely than not unpatentable for indefiniteness or obviousness over Berardi and Gladfelter.

  RulingsInstitution decision

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

    “may be instituted only if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.”” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Person of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art at the time of the effective filing date of the ’057 patent “would have been a person having general knowledge about and experience with the manufacture and/or use of hoses and with fluid mechanics and materials science as they relate to hoses and how hoses work generally. The person of ordinary skill has at least an associate’s degree in science or engineering.” Pet. 17 (citing Ex. 1005). Patent Owner does not challenge Petitioner’s assertion. On these facts, we determine that Petitioner’s articulation of a person of ordinary skill in the art is credible.” slip op. at 7

  • Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable

    “’057 patent defines the following relevant claim terms: “extended length” and “maximum stretched length.” Petitioner does not dispute that these claim terms are defined expressly by the ’057 patent, nor does Petitioner indicate that these claim terms are indefinite. Next, each independent claim recites expressly that the “stretched length” is longer than the “extended length,” which we construed above as “the length the hose or those components extend to when the hose is pressurized with a fluid and no extension forces are applied other than fluid pressure.” Finally, the term “maximum stretched length,” both by the use of the word “maximum” and the express definition set forth in the ’057 patent, indicates that it constitutes an upper bound for the term “stretched length.” Accordingly, through transitive analysis, we determine that the recited term “stretched length” is a relative length intermediate the explicitly defined terms “extended length” and “maximum stretched length.” Relative claim terminology is acceptable if one of ordinary skill would have understood what is claimed, in light of the Specification. Seattle Box Co., Inc. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984).” slip op. at 10

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

    “those components extend to when the hose is pressurized with a fluid and no extension forces are applied other than fluid pressure,” and also determined that “stretched length” is a relative length intermediate the explicitly defined terms “extended length” and “maximum stretched length.” When considered in the aggregate, we see that “extended length” is a length of a hose attributable to only fluid pressure, while “stretched length” is a length of a hose attributable to any force other than fluid pressure. Accordingly, a discussion of the prior art must acknowledge the interplay between the length of the hose, fluid pressure, and other forces, in order to meet the aforementioned claim limitation.” slip op. at 17

  § 102 anticipation§ 112 disclosure
  Patents in suitUS 9,182,057
• Deere & Company v. Richard GrammAll claims unpatentable
  PTAB · Sep 22, 2016 · IPR2015-00899 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–11 and 27–34 are unpatentable as obvious over the three combinations of prior art identified by the Board.

  RulingsFinal written decision

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

    “a “header” or a “combine” per se; rather, it is a header height control apparatus—an “apparatus for detecting and controlling the height above the soil of an agricultural machine as it traverses a field.” Ex. 1001, 1:11–13. Nonetheless, there is no prohibition on a patentee drafting his or her claim in a manner that further limits the invention if additional structure is recited in the claim. As argued by Patent Owner, the recitation of “a non-cut crop header” and “a combine” in the preamble of claim 1, provide antecedent basis for at least two terms recited in the body of the claim—“the header” and “said combine.” The body of the claim reflects that the patentee chose to claim the header control apparatus in terms not limited to said apparatus standing alone, but rather the apparatus as attached (coupled) to the header of a combine. See, e.g., Ex. 1001, 7:33–34 (“a pre-loaded, generally linear flexible arm coupled to a forward portion of the header” (emphasis added)); 7:44–45 (“control means coupled to said header” (emphasis added)); 7:48– 51 (“wherein said flexible arm and angular deflection sensing means are attached to a head housing disposed on a forward portion of said combine” (emphases added)); 7:54–56 (“wherein said mounting bracket further couples said flexible arm to a forward end of said head housing” (emphasis added)). The prosecution history reflects that the patentee at first desired the recitation of “header” in the claim to be limited to “non-cut crop” headers, in an attempt to distinguish cut crop headers. Ex. 1002, 142 (Amendment filed June 19, 2000). The examiner, however, did not accept such argument (id. at 152–53 (Office Action mailed Aug. 24, 2000)), and the patentee did not reiterate or maintain the argument in amending the claims following the August 24, 2000, final rejection. Id. at 158–63 (Amendment filed Nov. 22, 2000). Nonetheless, the prosecution history is informative on this issue. In light of our discussion above regarding the claim language, specification, and the prosecution history, we do not construe the entire preamble as limiting. In particular, the preamble recites an apparatus for maintaining, and is presented clearly as reciting an intended use. That being said, we agree with the Patent Owner that the phrase “non-cut crop header” limits the terms “the header” and “said header” recited in the body of claim 1 such that “the header” and “said header” recited in the body of claim 1 are the same “non-cut crop header” recited in the preamble of the claim.11” slip op. at 24

  • Skill levelSkill level board ownOther

    “The parties’ statements of the level of ordinary skill are not significantly different, and the differences between their proposed levels of ordinary skill would not affect the outcome of this proceeding.5 In light of our review of the record, including the ’395 patent, the competing expert testimony, and the issues discussed during the oral argument, we agree with different aspects of the parties’ proposals. First, as Petitioner notes in its Reply, a mechanical engineer having familiarity with hydraulic systems and sensors, as Patent Owner proposes, does not have experience necessarily with agricultural equipment or combines. Reply 2, n.1. Thus, Patent Owner’s educational prong is overly broad. Second, Petitioner’s educational prong, on the other hand, is too narrow, requiring “design” of combines or 5 Indeed, neither party argues that any difference between the proposed levels of ordinary skill would affect the outcome of this proceeding. agricultural equipment. Third, we find that Petitioner’s experience prong also is too narrow, because it requires experience specifically in the “design” of agricultural equipment or combines. Accordingly, we find that the level of ordinary skill in the art is “a mechanical engineer having familiarity6 with agricultural equipment, such as combines, and hydraulic systems and sensors” or “a person having 10 or more years of experience7 working with combines.”8” slip op. at 11

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

  Patent outcomesUS 6,202,395 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,202,395
• Deere & Company v. Richard GrammAll claims unpatentable
  PTAB · Sep 22, 2016 · IPR2015-00898 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–11 and 27–34 are unpatentable as obvious over the three instituted combinations of prior art.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “significantly different, and the differences between their proposed levels of ordinary skill would not affect the outcome of this proceeding.5 In light of our review of the record, including the ’395 patent, the competing expert testimony, and the issues discussed during the oral argument, we agree with different aspects of the parties’ proposals. First, as Petitioner notes in its Reply, a mechanical engineer having familiarity with hydraulic systems and sensors, as Patent Owner proposes, does not have experience necessarily with agricultural equipment or combines. Reply 2, n.1. Thus, Patent Owner’s educational prong is overly broad. Second, Petitioner’s educational prong, on the other hand, is too narrow, requiring “design” of combines or agricultural equipment. Third, we find that Petitioner’s experience prong also is too narrow, because it requires experience specifically in the “design” of agricultural equipment or combines. Accordingly, we find that the level of ordinary skill in the art is “a mechanical engineer having familiarity6 with agricultural equipment, such as combines, and hydraulic systems and 5 Indeed, neither party argues that any difference between the proposed levels of ordinary skill would affect the outcome of this proceeding. 6 The familiarity may have been gained, as proposed by Petitioner, by “approximately three years of experience in combine or agricultural equipment design, including components thereof, such as headers and header height control systems” (Pet. 5 (citation omitted)), but also may have been gained through other experience. sensors” or “a person having 10 or more years of experience7 working with combines.”8” slip op. at 11

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

    “We agree with Petitioner that under either party’s proposed construction, Cleveland’s sensor arm, including spring 38, is flexible. See infra pages 41–42 (Section III.B.5.a.ii.b)2.b.). Accordingly, we need not choose between either party’s proposed constructions. 2. Other Claim Terms The parties propose constructions for several additional claim terms, including “pre-loaded,” “angular deflection sensing means,” “control means,” “biasing means,” “first stop means,” “second stop means,” “guard means,” and “flange.” Pet. 11–15; Resp. 19–23. Although the parties have some disagreement as to the meaning of several of these terms, there is no dispute that the references upon which we instituted review disclose these elements of the claims.4 Accordingly, there is no controversy as to these terms that requires our resolution in order to ascertain whether the claims would have been obvious to one of ordinary skill in the art as of the time of the invention in light of the references and arguments before us.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingMixed

    “a “header” or a “combine” per se; rather, it is a header height control apparatus—an “apparatus for detecting and controlling the height above the soil of an agricultural machine as it traverses a field.” Ex. 1001, 1:11–13. Nonetheless, there is no prohibition on a patentee drafting his or her claim in a manner that further limits the invention if additional structure is recited in the claim. As argued by Patent Owner, the recitation of “a non-cut crop header” and “a combine” in the preamble of claim 1, provide antecedent basis for at least two terms recited in the body of the claim—“the header” and “said combine.” The body of the claim reflects that the patentee chose to claim the header control apparatus in terms not limited to said apparatus standing alone, but rather the apparatus as attached (coupled) to the header of a combine. See, e.g., Ex. 1001, 7:33–34 (“a pre-loaded, generally linear flexible arm coupled to a forward portion of the header” (emphasis added)); 7:44–45 (“control means coupled to said header” (emphasis added)); 7:48– 51 (“wherein said flexible arm and angular deflection sensing means are attached to a head housing disposed on a forward portion of said combine” (emphases added)); 7:54–56 (“wherein said mounting bracket further couples said flexible arm to a forward end of said head housing” (emphasis added)). The prosecution history reflects that the patentee at first desired the recitation of “header” in the claim to be limited to “non-cut crop” headers, in an attempt to distinguish cut crop headers. Ex. 1002, 142 (Amendment filed June 19, 2000). The examiner, however, did not accept such argument (id. at 152–53 (Office Action mailed Aug. 24, 2000)), and the patentee did not reiterate or maintain the argument in amending the claims following the August 24, 2000, final rejection. Id. at 158–63 (Amendment filed Nov. 22, 2000). Nonetheless, the prosecution history is informative on this issue. In light of our discussion above regarding the claim language, specification, and the prosecution history, we do not construe the entire preamble as limiting. In particular, the preamble recites an apparatus for maintaining, and is presented clearly as reciting an intended use. That being said, we agree with the Patent Owner that the phrase “non-cut crop header” limits the terms “the header” and “said header” recited in the body of claim 1 such that “the header” and “said header” recited in the body of claim 1 are the same “non-cut crop header” recited in the preamble of the claim.13” slip op. at 23

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

    “e. Conclusion of Obviousness We have considered Petitioner’s evidence and argument and determine that the combination of DPC, Chmielewski, Cleveland, and DA meets the limitations of claims 1–7, 10, 27, 28, and 34, and that one of ordinary skill in the art would have had reason, with rational underpinning, for combining the teachings of these references. We have considered Patent Owner’s arguments to the contrary and determine that they are unpersuasive. The parties do not introduce or rely on objective indicia of nonobviousness. After weighing the evidence, we conclude that Petitioner has shown, by a preponderance of the evidence, that claims 1–7, 10, 27, 28, and 34 would have been obvious over DPC, Chmielewski, Cleveland, and DA.” slip op. at 61

  Patent outcomesUS 6,202,395 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,202,395
• Jackel International Limited / Mayborn USA, Inc. v. Admar International, Inc.No claims unpatentable
  PTAB · Sep 21, 2016 · IPR2015-00979 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1–5, 7–12, and 14 were not shown unpatentable under § 103 because the cited references did not teach or suggest the claimed spout.

  RulingsFinal written decision

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

    “In summary, we find that the extrinsic evidence cited by Patent Owner indicates that the ordinary and customary meaning of “spout,” as would have been understood by one of ordinary skill in the art in the context of the entire disclosure of the ’841 patent, is “a tube or lip projecting from a container, through which liquid can be poured and through which a user drinks” (see Ex. 1001 at 2:6–11, 5:11–13, 5:60–67, 6:2–7, 6:17–23, 10:5–8, Figs. 1, 2, 5, 11–14, claims 1, 8; Ex. 2011, 1688) and does not include a nipple (see Ex. 2022 at 5–8, Figs. 1–3; Valderrama Decl. ¶¶ 91–94). Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2011) (“Even under the broadest reasonable interpretation, the Board’s construction ‘cannot be divorced from the specification and the record evidence,’ and ‘must be consistent with the one that those skilled in the art would reach.’”). Accordingly, based on the complete record before us, we interpret “spout” to mean “a tube or lip projecting from a container, through which liquid can be poured and through which a user drinks” and does not encompass a nipple.” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “For the reasons discussed above in Section II.A, we determine that the broadest reasonable interpretation in view of the ’841 patent’s specification of “spout” to be “a tube or lip projecting from a container, through which liquid can be poured and through which a user drinks” and does not encompass a nipple. We agree with Patent Owner that liquid cannot be poured through a nipple. PO Resp. 10 (“Spouts are intended for a stream of liquid, while nipples are intended for liquid to seep.”); see also Tr. 24:2– 26:3, 29:12–16 (arguing liquids are poured through a spout); Ex. 1022 at 140:1–12 (Mr. Valderrama testifying that Raymond and Mutti do not have a spout); Ex. 2026, 34:20–35:15, 50:23–51:7 (Dr. Brown testifying that Raymond does not refer to a spout). We find that liquid cannot be poured through Petitioners’ asserted spout (Pet. 18 (citing Ex. 1002 ¶ 32; Ex. 1003 at 5:17–20, Fig. 2)). The full record persuades us that Petitioners’ asserted spout in Raymond and similar structure in Mutti do not teach or suggest the spout of claim 1. See PO Resp. at 28–30 (citing Valderrama Decl. ¶¶ 135– 138; Ex. 1005, Fig. 2–4; Ex. 2026, 27:24–25:16, 86:10–25). Therefore, we find that Raymond fails to teach or suggest the spout of claim 1, as argued by Petitioners. Petitioners rely on Mutti to teach slits that would be understood to be self-sealing. Pet. 19–20 (citing Ex. 1002 ¶ 69; Ex. 1004, Figs. 10–11). Petitioners’ reliance on Mutti does not remedy the deficiency discussed above regarding the “spout” of claim 1.” slip op. at 21

  • ExcludeMotion to exclude, deniedDenied

    “Declaration of Stuart Brown (Ex. 1002)” because Patent Owner contends that “Dr. Brown admittedly has no experience in the design or development of the no-spill cups at issue in the ’841 patent” and “thus no basis to render an opinion of a person ordinarily skilled in the art.” Paper 31, 1. Petitioners respond that Patent Owner “failed to make a timely objection within ten business days of the institution of trial in this matter as required by 37 C.F.R. 42.64(b)(1)” and that Dr. Brown “is more than qualified to opine as a technical expert witness in the relevant art.” Paper 30, 1. Patent Owner filed a Reply (Paper 34). We agree with Petitioners that Patent Owner’s Motion to Exclude is not in compliance with 37 C.F.R. § 42.64(b). Even if Patent Owner’s Motion complied with our rules, however, as discussed above, we considered the Brown Declaration against the full record and gave it appropriate weight. And even having considered the relevant portions of the Brown Declaration, we are persuaded by Patent Owner’s arguments regarding whether the relied upon references teach or suggest “spout.” We, thus, deny Patent Owner’s Motion to Exclude.” slip op. at 26

  • Strike new argumentNew argument consideredDecided for petitioner

    “We agree with Petitioners that the portions of Petitioners’ Reply identified by Patent Owner are properly responsive to arguments presented by Patent Owner in its briefs. Also, to the extent any of the identified portions can be deemed new arguments, even when those new arguments are considered, as discussed above, we are nevertheless persuaded by Patent Owner’s arguments regarding whether the relied upon references teach or suggest “spout,” and so the objection is overruled.” slip op. at 25

  Patent outcomesUS 8,695,841 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,695,841
• Zepp Labs, Inc. v. Blast Motion, Inc.Institution denied
  PTAB · Aug 29, 2016 · IPR2016-00674 · APJ Miriam L Quinn · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–3 and 14 were unpatentable over the asserted § 103 combinations.

  RulingsInstitution decision

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

    “transmitted after an “event,” and refers to Mahajan’s disclosure that “[a]fter you have swung the iClub, data is wirelessly transmitted to your hand held laptop, cell phone or other electronic device.” Pet. 32 (citing Ex. 1005 ¶ 63). As Patent Owner explains (Prelim. Resp. 14), however, Mahajan expressly teaches real-time transmission of data from the microcontroller to the software running on the receiving computer. See Ex. 1005 ¶ 53. After the computer receives the sensor data from the motion capture element, the receiving computer determines whether the incoming data represents a swing event. Id. at ¶ 57. Thus, the receiving computer receives the data before the system has determined that an “event” has occurred. Petitioner does not explain sufficiently how Mahajan, which expressly describes a system predicated on real-time transmission, teaches or suggests receiving data “after an event or periodically requesting said motion capture data.” In addition, Petitioner refers to the disclosure in Oleson of a sensor transmitting data to a mobile phone where the “mobile phone must periodically transmit a message to the motion sensor to prevent the sensor from entering low-power mode,” and that “while in active mode, the motion sensor periodically transmits data to the mobile phone.” Pet. 32 (citing Ex. 1011, ¶¶ 76, 85, 86). We agree with Patent Owner (Prelim. Resp. 1718) that the Petition does not sufficiently address why a skilled artisan would modify Mahajan’s real-time transmitting microcontroller to implement the cited aspects of Oleson. See Pet. 33. Petitioner’s articulation that the references have similarities, such as Oleson’s field of quantifying sports performance, and that it would have been an “obvious design choice” to combine their teachings provides insufficient facts and reasons to combine. Accordingly, we determine that Petitioner has not established a reasonable likelihood of prevailing with respect to claim 1, and the remaining dependent challenged claims (claims 2 and 3). Claim 14 recites the same limitation, and Petitioner relies on the same arguments and evidence presented with respect to claim 1. See Pet. 52 (referring, for claim 14, to the corresponding limitations of claim 1).” slip op. at 9

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

    “transmitting data to a mobile phone where the “mobile phone must periodically transmit a message to the motion sensor to prevent the sensor from entering low-power mode,” and that “while in active mode, the motion sensor periodically transmits data to the mobile phone.” Pet. 32 (citing Ex. 1011, ¶¶ 76, 85, 86). We agree with Patent Owner (Prelim. Resp. 1718) that the Petition does not sufficiently address why a skilled artisan would modify Mahajan’s real-time transmitting microcontroller to implement the cited aspects of Oleson. See Pet. 33. Petitioner’s articulation that the references have similarities, such as Oleson’s field of quantifying sports performance, and that it would have been an “obvious design choice” to combine their teachings provides insufficient facts and reasons to combine. Accordingly, we determine that Petitioner has not established a reasonable likelihood of prevailing with respect to claim 1, and the remaining dependent challenged claims (claims 2 and 3). Claim 14 recites the same limitation, and Petitioner relies on the same arguments and evidence presented with respect to claim 1. See Pet. 52 (referring, for claim 14, to the corresponding limitations of claim 1).” slip op. at 9

  § 103 obviousness
  Patents in suitUS 9,039,527
• Zepp Labs, Inc. v. Blast Motion, Inc.Institution denied
  PTAB · Aug 29, 2016 · IPR2016-00672 · APJ Miriam L Quinn · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 4-7, 9, 11, 14-16, and 19 were unpatentable over the asserted § 103 grounds.

  RulingsInstitution decision

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

    “inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and Preliminary Response, we determine that the information presented in the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in showing that claims 1, 47, 9, 11, 1416, and 19 are unpatentable.” slip op. at 2

  • BurdenInstitution denied

    “artisan would have had reason to modify Mahajan’s microcontroller such that these functions would be performed by the microcontroller. Petitioner argues that a person of ordinary skill would have been able to program these functions in either the microcontroller of Mahajan’s iClub or the mobile device. See, e.g., Pet. 28. In support, Petitioner contends “whether specific functionality is implemented in the software running on the iClub or software running on the mobile device is a matter of design choice.” Pet. 2728 (citing Ex. 1003 ¶ 123, Ex. 1005 ¶ 62). The argument that implementing the software in the iClub would be a matter of design choice is conclusory, and lacks sufficient factual support. See Prelim. Resp. 2627. Although the Petition mentions power consumption, cost, and speed as possible considerations affecting the purported design choice, the Petition does not explain sufficiently how these factors affect or motivated the alleged design choice advanced by Petitioner. Cutsforth, Inc. v. Motivepower, Inc., No. 20151316, slip. Op. 78 (Fed. Cir. Jan. 22, 2016) (“Merely stating that a particular placement of an element is a design choice does not make it obvious. The Board must offer a reason for why a person of ordinary skill in the art would have made the specific design choice” alleged by Petitioner.).” slip op. at 13

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

    “under the broadest reasonable interpretation standard, the proper construction includes ‘data that comprises sensor values.’” Pet. 8 (citing Ex. 1003 ¶ 47). Patent Owner disagrees that “said data” is indefinite, and instead asserts that “said data” should be construed as “data that comprises sensor values.” Prelim. Rep. 6. Aside from the indefiniteness issue, Petitioner and Patent Owner appear to agree as to the proper construction of “said data.” That would appear to weigh in favor of Patent Owner’s position that “said data” is not indefinite. Notwithstanding the apparent disagreement concerning this term, we do not opine further on this issue at this time, as construction of the term is not necessary to any determination made herein. 2. Other Claim Terms We determine that no express construction of any other claim terms is necessary.” slip op. at 7

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

    “is deficient in articulating a reasonable reason to combine the teachings of Mahajan, Edis, and Su. See Prelim. Resp. 35–36. Specifically, Petitioner has not shown sufficiently why a skilled artisan would have modified Mahajan to incorporate the recited functions, allegedly taught by Edis and/or Su. For example, Petitioner asserts that “[u]sing thresholding techniques of Edis and Su within the microcontroller of Mahajan, to for example distinguish ‘real swing versus your warm up’ motion, would have been obvious because thresholding sensed data against pre-specified values is common to microprocessor controller DAS.” Pet. 30 (citing Ex. 1003 ¶ 127). As another example, Petitioner baldly states that for “signifying a prospective event,” “it would have been obvious to a person of ordinary skill at the time of the invention to combine Edis with Mahajan, for example, as the way to distinguish a real swing from warm up motion, as is used for signifying a prospective event.” Pet. 32. Similarly, Petitioner states that the “false-positive detection methodology of Su and the variable detection strategy of Edis could have been obviously programmed in the microcontroller of Mahajan.” Pet. 34. Stating only that the functions “could have been obviously programmed” or that the combinations would yield the claim limitation is insufficient rationale. The Petition fatally omits the express articulation of a reason why a person of ordinary skill in the art would have combined the teachings as Petitioner asserts. See KSR Int’l Co., v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions”). The omission of a rationale is particularly troublesome in light of Patent Owner’s argument that there is a lack of showing of why it would have been obvious to modify Mahajan’s teachings “so that its microcontroller—with its limited resources and processing power—was responsible for swing identification, rather than the receiving computer.” Prelim. Resp. 27.9 And Petitioner’s reliance on Mr. Nesbit’s 9 We also are persuaded by Patent Owner’s arguments, and the proffered analysis, regarding the deficiencies in the portions Dr. Nesbit’s Declaration identified by Patent Owner, as they amount to conclusory opinions of a rationale for the alleged combinations and lacking factual support or objective evidence supporting those opinions. Prelim. Resp. 2729. Declaration is unavailing as the Declaration repeats the conclusory statement included in the Petition with no further rationale or explanation.” slip op. at 16

  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,903,521
• Oracle America, Inc. v. Realtime Data LLCInstitution denied
  PTAB · Jul 1, 2016 · IPR2016-00375 · APJ J John Lee · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 2, 4, 10-12, and 18-20 were obvious over Kawashima and Sebastian.

  RulingsInstitution decision

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

    “Petitioner bears the burden to demonstrate a reasonable likelihood of prevailing on its asserted ground of unpatentability. See 35 U.S.C. § 314(a). By failing to identify clearly the specific aspects of the prior art that it alleges teaches each of the “memory device” limitations of claim 1, Petitioner has not met its burden. Its challenge to the remaining claims also fails because each claim is dependent on claim 1. Moreover, our Rule 42.104(b) requires a petition seeking inter partes review to “specify where each element of the claim is found in the prior art patents or printed publications relied upon,” and to explain “the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(3), (4). Here, the Petition does not provide enough information to meet the standard of Rule 42.104(b), which is fatal to Petitioner’s case. See, e.g., T-Mobile USA Inc. v Mobile Telecomms. Techs., LLC, Case IPR2015-00017, 2015 WL 1777146, at *8 (PTAB Apr. 8, 2015).” slip op. at 12

  • BurdenDenied

    “In sum, Petitioner does not explain adequately how Kawashima and Sebastian teach an individual memory device that meets the limitations of claim 1. To the extent Petitioner intended to allege that multiple structures in Kawashima together teach these limitations, the Petition does not explain such an allegation clearly, nor does it explain how or why a person of ordinary skill would have combined those different elements—some from different embodiments of Kawashima—to arrive at the recited memory device and its claimed characteristics. See Boston Sci. Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009) (holding that two embodiments in a single reference could be combined to render a claim obvious where an ordinary artisan would have been motivated to combine them). As discussed above, each limitation of claim 1 that recites a “memory device” refers to the same memory device, and it is unclear how the multiple different memory devices from different embodiments in Kawashima relied on by Petitioner teach the “memory device” of claim 1. Petitioner bears the burden to demonstrate a reasonable likelihood of prevailing on its asserted ground of unpatentability. See 35 U.S.C. § 314(a). By failing to identify clearly the specific aspects of the prior art that it alleges teaches each of the “memory device” limitations of claim 1, Petitioner has not met its burden. Its challenge to the remaining claims also fails because each claim is dependent on claim 1. Moreover, our Rule 42.104(b) requires a petition seeking inter partes review to “specify where each element of the claim is found in the prior art patents or printed publications relied upon,” and to explain “the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(3), (4). Here, the Petition does not provide enough information to meet the standard of Rule 42.104(b), which is fatal to Petitioner’s case. See, e.g., T-Mobile USA Inc. v Mobile Telecomms. Techs., LLC, Case IPR2015-00017, 2015 WL 1777146, at *8 (PTAB Apr. 8, 2015).” slip op. at 11

  Nonecites KSR · Graham
  Patents in suitUS 7,415,530
• Oracle America, Inc. v. Realtime Data LLCInstitution denied
  PTAB · Jul 1, 2016 · IPR2016-00377 · APJ Jason J Chung · IPR · Institution

  The Board denied institution on claims 1, 2, 4–6, 9, 11, 21, 22, 24, and 25 because the petition did not adequately show the same memory device met claim 1’s limitations.

  RulingsInstitution decision

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

    “Petitioner bears the burden to demonstrate a reasonable likelihood of prevailing on its asserted ground of unpatentability. See 35 U.S.C. § 314(a). By failing to identify clearly the specific aspects of the prior art that it alleges teaches each of the “memory device” limitations of claim 1, Petitioner has not met its burden. Moreover, our Rule 42.104(b) requires a petition seeking inter partes review to “specify where each element of the claim is found in the prior art patents or printed publications relied upon,” and to explain “the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(3), (4). Here, the Petition does not provide enough information to meet the standard of Rule 42.104(b), which is fatal to Petitioner’s case. See, e.g., T-Mobile USA Inc. v Mobile Telecomms.” slip op. at 14

  • BurdenDenied

    “Petitioner, therefore, fails to explain how Kawashima and Sebastian teach an individual memory device that meets the limitations of claim 1. To the extent Petitioner intended to allege that multiple structures in Kawashima together teach these limitations, the Petition does not explain such an allegation clearly, nor does it explain how or why a person of ordinary skill would have combined those different elements—some from different embodiments of Kawashima—to arrive at the recited memory device and its claimed characteristics. See Boston Sci. Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009) (holding that two embodiments in a single reference could be combined to render a claim obvious where an ordinary artisan would have been motivated to combine them). Petitioner bears the burden to demonstrate a reasonable likelihood of prevailing on its asserted ground of unpatentability. See 35 U.S.C. § 314(a). By failing to identify clearly the specific aspects of the prior art that it alleges teaches each of the “memory device” limitations of claim 1, Petitioner has not met its burden. Moreover, our Rule 42.104(b) requires a petition seeking inter partes review to “specify where each element of the claim is found in the prior art patents or printed publications relied upon,” and to explain “the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(3), (4). Here, the Petition does not provide enough information to meet the standard of Rule 42.104(b), which is fatal to Petitioner’s case. See, e.g., T-Mobile USA Inc. v Mobile Telecomms.” slip op. at 14

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

    “Petitioner, therefore, fails to explain how Kawashima and Sebastian teach an individual memory device that meets the limitations of claim 1. To the extent Petitioner intended to allege that multiple structures in Kawashima together teach these limitations, the Petition does not explain such an allegation clearly, nor does it explain how or why a person of ordinary skill would have combined those different elements—some from different embodiments of Kawashima—to arrive at the recited memory device and its claimed characteristics. See Boston Sci. Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009) (holding that two embodiments in a single reference could be combined to render a claim obvious where an ordinary artisan would have been motivated to combine them).” slip op. at 14

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

    “We decline to adopt Petitioner’s proposed claim construction, at least because Petitioner’s proposed claim construction omits the claimed “memory device” and its relationship to the faster storage limitation. See Prelim. Resp. 13. As noted by Patent Owner, “a claim should be constructed so that each word in the claim has meaning.” Id., citing Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) and In re Wilson, 424 F.2d 1382, 1385 (C.C.P.A.1970). Accordingly, no claim terms require express construction for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 6

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,116,908

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.