• Ewald Dörken AG v. Schaeffler Technology AG & Co. KG.Institution denied
  PTAB · Feb 20, 2025 · IPR2024-01365 · APJ James J Mayberry · IPR · Institution

  The Board denied institution on all three obviousness grounds because the Petition did not show a reasonable likelihood of prevailing on claims 1–7.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024) (permitting the Board to institute trial on behalf of the Director). To institute an inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons set forth below, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner contends that “[a] person having ordinary skill in the art (‘POSITA’) would have been a person having, as of 21 July 2017: (1) at least an undergraduate degree in engineering and/or material science, or similar education; and (2) two or more years of experience with coatings.” Pet. 7–8; see Ex. 1009 ¶ 25 (providing the same level of ordinary skill). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. Prelim. Resp. 5. We apply Petitioner’s definition of the level of ordinary skill in the art. We determine that this definition is consistent with the prior art of record and the skill reflected in the Specification of the ’756 patent, based on our review of the record.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededOther

    “Petitioner submits that . . . the claims should be given their plain and ordinary meaning.” Pet. 11. Patent Owner does not propose any specific constructions. See Prelim. Resp. 4–5.8 We determine that we need not expressly construe any other claim terms to resolve the parties’ disputes on the current record. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’” (emphasis added)) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). To the extent that the scope of any other claim term requires discussion, however, we provide it in our assessment of the challenges, which we turn to next. slip op. at 11

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

    “Ex. 1003 ¶¶ 18–19. Petitioner provides no additional discussion on this disclosure, including how it satisfies the zinc flake coating limitation. See Pet. 15–17, 20. Petitioner’s sole citation to Dr. Haber’s declaration associated with this claim limitation is to paragraph 35, which provides the same claim chart as is in the Petition. See Pet. 17; Ex. 1009 ¶ 35.” slip op. at 12

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,098,756
• Crusoe Energy Systems, LLC v. Upstream Data Inc.Some claims unpatentable
  PTAB · Jan 21, 2025 · PGR2023-00039 · APJ Matthew S Meyers · PGR · Final written decision

  Claims 1 and 24 are unpatentable under § 101 as directed to an abstract idea without an inventive concept; the petitioner did not prove the remaining challenged claims unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The level of ordinary skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including: “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Best Med. Int’l, Inc. v. Elekta Inc., 46 F.4th 1346, 1353 (Fed. Cir. 2022) (citations omitted). “The patent’s purpose can also be informative.” Id. (citation omitted). Petitioner asserts that one of ordinary skill in the art (“POSITA”) would have had “a degree in chemical engineering, petroleum engineering, process engineering, mechanical engineering, or a similar field with 1–2 years of experience in designing power generation systems, Blockchain mining systems, or other comparable hands-on experience.” Pet. 7 (citing Ex. 1003 ¶ 19). Petitioner adds that “[a]lternatively, a person having 3–5 years of experience in the Blockchain mining industry would also qualify as a POSITA” and “[a]dditional education could substitute for professional experience, or vice versa.” Id. at 7–8 (citing Ex. 1003 ¶ 19).” slip op. at 10

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

    “We apply the same claim construction standard used in district court actions under 35 U.S.C. § 282(b), namely that articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.200(b) (2024). In applying that standard, claim terms generally are given their ordinary and customary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17).” slip op. at 11

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

    “To address that “the mining processors are connected to the network interface and adapted to mine transactions associated with the blockchain database and to communicate with the blockchain database,” as recited by limitation [1c_iii], Petitioner asserts that CryptoKube’s system includes “Bitcoin miners such as spondooliestech SP35 servers.” Pet. 25 (citing Ex. 1006, 1–4). And, relying on the declaration testimony of Mr. Kasdorf, Petitioner concludes that one of ordinary skill in the art would have understood that to mine Bitcoin, the mining processors need to be connected to a network interface and adapted to mine transactions associated with the blockchain database and to communicate with the blockchain database, which is implemented as a public ledger distributed among many peer-to-peer devices connected to the Internet. Id. (citing Ex. 1004 ¶¶ 108–109; Ex. 1010 ¶ 419). Mr. Kasdorf’s declaration testimony is nearly verbatim to the Petition and similarly provides no indication as to what in CryptoKube constitutes a “mining processor” other than his conclusory opinion that one of ordinary skill in the art “would have understood that to mine bitcoin, the mining processors need to be connected to a network interface and adapted to mine transactions associated with the 19 We note that Mr. Kasdorf’s reliance on Kheterpal is limited to Kheterpal’s background discussion regarding the Bitcoin protocol inasmuch as it “defines a system in which the creation and distribution of the bitcoin cryptocurrency is governed by consensus among a peer-to-peer network” and includes “a public ledger in which new transactions are verified and recorded by members of the network via cryptography.” Ex. 1010 ¶ 4. Ex. 1004 ¶ 108 (citing Ex. 1010 ¶ 4). Thus, we agree with Patent Owner that in the Petition, neither Petitioner nor Mr. Kasdorf explains or “cite[s] any evidence regarding which component is the ‘necessarily’ present mining processor (limitation 1[c_i]) or how this unspecified mining processor is ‘connected to the network interface and adapted to . . . communicate with the blockchain database’ (limitation 1[c_iii]).” PO Resp. 42–43 (citing Ex. 1004 ¶¶ 104–105, 108–109).” slip op. at 21

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Petitioner’s contention that “a combination of an ASIC chip and a controller would meet the ‘mining processor’ limitation” (Pet. Reply 11 (citing Ex. 1036 ¶ 21)) is an improper new argument. In determining whether an argument is a proper argument in reply, we look to see if the Reply argument is responsive to an argument from Patent Owner and expands on a position in the Petition. See Rembrandt Diagnostics, LP v. Alere, Inc., 76 F.4th 1376, 1384 (Fed. Cir. 2023) (“[W]e have held that a reply may be proper if it is responsive and simply expands on previously raised arguments.”). Or, if Petitioner relies on previously unidentified disclosure “to make a meaningfully distinct contention.” Id. at 1383 (“[W]e held that a petitioner who asserted in its reply previously unidentified prior-art disclosures ‘to make a meaningfully distinct contention’ was impermissibly raising a new theory of unpatentability.”). We find that Petitioner’s argument in reply is closer to the later situation. Here Petitioner does not expand on a position from the Petition that Patent Owner criticizes based on the merits of the contentions. Rather, Petitioner supplements its conclusory assertion that a “mining processor” is necessarily present in CryptoKube’s spondooliestech SP35 servers (Pet. 23, 25 (citing Ex. 1006, 1–4)) with its new assertion that that “a combination of an ASIC chip and a controller would meet the ‘mining processor’ limitation.” Pet. Reply 11. Petitioner does not purport to have presented this theory in the Petition. Id. Instead, Petitioner argues that this theory was properly raised in response to what Petitioner alleges to be an admission by” slip op. at 27

  Patent outcomesUS 11,574,372 mixed
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Berkheimer · Electric Power · Phillips · KSR · Graham
  Patents in suitUS 11,574,372
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Resonant Systems, Inc.Some claims unpatentable
  PTAB · Jan 8, 2025 · IPR2023-00992 · APJ Steven M Amundson · IPR · Final written decision

  Claims 1, 2, 7, 8, 11, and 17 are unpatentable; claims 3–6, 9, and 14 are not shown unpatentable, and claims 15 and 16 were disclaimed.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “B. Level of Ordinary Skill in the Art Factors pertinent to determining the level of ordinary skill in the art include (1) the educational level of the inventor; (2) the type of problems encountered in the art; (3) prior-art solutions to those problems; (4) the rapidity with which innovations are made; (5) the sophistication of the technology; and (6) the educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). Not all factors may exist in every case, and one or more of these or other factors may predominate in a particular case. Id. These factors are not exhaustive, but merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Moreover, the prior art itself may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner asserts that a person of ordinary skill in the art at the time of the alleged invention “would have had a bachelor’s degree in electrical engineering, mechanical engineering, computer science, or a similar field and two years of experience related to electronic consumer product design.” 3 The parties do not provide evidence or argument regarding objective indicia of nonobviousness. See, e.g., Pet. 9–93; Resp. 18–66. Pet. 6. Petitioner also asserts that an ordinarily skilled artisan “could have also obtained similar knowledge and experience through other means.” Id. Dr. Wolfe’s testimony supports Petitioner’s assertions. See Ex. 1003 ¶ 30. Patent Owner asserts that a person of ordinary skill in the art at the time of the alleged invention “would have had (1) a bachelor’s degree in electrical engineering, mechanical engineering, or a comparable field of study, and (2) at least two years of professional experience with electro-mechanical control systems, or other similarly relevant industry experience.” Resp. 3. Patent Owner also asserts that “[a]dditional relevant industry experience may compensate for lack of formal education or vice versa.” Id. Dr. Goossen’s testimony supports Patent Owner’s assertions. See Ex. 2008 ¶ 16.” slip op. at 15

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

    “10. SUMMARY “[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Above, we discussed issues concerning the “component” limitations in claims 1, 3, and 4 and an ambiguity in claim 4. See supra §§ III.C.4(c), III.C.5(c), III.C.6(c), III.C.7(c), III.C.8(c), III.C.9. We determine that no other claim language requires a discussion of scope or an explicit construction to decide whether Petitioner satisfies the “preponderance of the evidence” standard for proving unpatentability. D. Alleged Obviousness over Fukumoto: Claims 1–3, 7–9, and 17 Petitioner contends that claims 1–3, 7–9, and 17 are unpatentable under § 103(a) because the claims would have been obvious over Fukumoto. See Pet. 9–35; Reply 16–22. Patent Owner disputes Petitioner’s contentions. See Resp. 18–27; Sur-reply 7–14. Below, we provide an overview of Fukumoto. Then, we consider the obviousness issues. For the reasons explained below, we agree with Petitioner that claims 1, 2, 7, and 17 are unpatentable under § 103(a) because the claims would have been obvious over Fukumoto but disagree that claims 3, 8, and 9 are unpatentable based on Fukumoto.” slip op. at 44

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

    “2. MEANS-PLUS-FUNCTION CLAIMING The patent statute provides that “[a]n element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” 35 U.S.C. § 112 ¶ 6 (2006). The absence of the word “means” in a claim limitation creates a rebuttable presumption that § 112’s means-plus-function provision does not apply. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part). When a claim limitation lacks the word “means,” a party may rebut the presumption that § 112’s means-plus-function provision does not apply by demonstrating that “the claim term fails to ‘recite[] sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’” Williamson, 792 F.3d at 1348 (alteration by the court) (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)). Construing a means-plus-function limitation involves two steps: first, identify the claimed function or functions; and second, determine what structure, if any, disclosed in the patent’s specification corresponds to the claimed function or functions. Williamson, 792 F.3d at 1351; see Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311 (Fed. Cir. 2001). For the second step, a person of ordinary skill in the art must “recognize the structure in the specification and associate it with the corresponding function in the claim.” All-Voice Computing PLC v. Nuance Commc’ns, Inc., 504 F.3d 1236, 1241 (Fed. Cir. 2007). The “duty to link or associate structure to function is the quid pro quo for the convenience” of using means-plus-function claiming. B. Braun Med., Inc., v. Abbott Lab’ys, 124 F.3d 1419, 1424 (Fed. Cir. 1997). When a limitation recites two or more functions, the specification” slip op. at 18

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

    “Conclusion About Obviousness/Nonobviousness For the reasons discussed above, Fukumoto teaches claim 1’s subject” slip op. at 64

  Patent outcomesUS 9,369,081 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,369,081
• Sony Interactive Entertainment LLC v. Quantum Imaging LLCNo claims unpatentable
  PTAB · Dec 9, 2024 · IPR2023-00995 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1, 3, 5, 7–12, and 23–26 were not shown unpatentable over Pisanich or the PSO Manual because neither was shown to teach or suggest the claimed QIE module.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We do not agree with Patent Owner that “Petitioner’s definition of a POSITA includes a general knowledge of advertising and virtual reality, but these backgrounds do not specifically apply to the ‘941 Patent at issue, and Patent Owner is unaware why Petitioner would include them in their definition.” Id. at 5. The ’941 patent claims and describes a “virtual thematic environment” in detail. Indeed, the ’941 patent describes an embodiment “having a program for integrating holographic images into a virtual thematic environment using a computerized system, includes means for displaying images from a virtual thematic environment; and means for projecting the images as holographic projections using a holographic projection system.” Ex. 1001, 3:61–67. As for advertising, the ’941 patent discusses that advertising can be included in the virtual thematic environment, id. at 7:42–57, and explains that “digital content library 209 4 “POSITA” is “person of ordinary skill in the art.” may also include scheduling directions for when the web site access and identification of where to place the web content or advertising, e-commerce, video, etc. are to be placed,” id. at 17:35–39. We adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’941 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art). We note that we would reach the same conclusions applying either Petitioner’s or Patent Owner’s definition of the level of skill in the art.” slip op. at 10

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

    “Additionally, only terms that are in controversy need to be construed, and these terms need be construed only to the extent necessary to resolve the controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “technology to display objects internal to the cockpit, and to display objects external to the aircraft in the virtual thematic environment” and “[s]aid ‘conventional technology’ included rendering technology configured to account for differences between multiple gaming devices as needed” to be without sufficient factual support. See Ex. 1004 ¶¶ 147–148 (citing Ex. 1007, 16:10–11; Ex. 1004 ¶ 83).. Although it may have been known in the art to create different versions or programs of a game for different devices, Mr. Crane points to no disclosure in Pisanich that explains or discloses a QIE consistent with the plain language of the claim. He points to no textbook, technical disclosure, or other independent evidence that would have led a person of ordinary skill considering Pisanich to implement a “software layer” that receives real time data and manipulates this data “so as to be accessible on different types of devices for use within the virtual thematic environment.” See, e.g., Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9, at 15–17 (PTAB Aug. 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it “is conclusory and unsupported, [and] adds little to the conclusory assertion for which it is offered to support”). Our Trial Practice Guide cautions against crediting unsupported testimony: The Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010). However, the testimony must be based on sufficient facts and data. Fed. R. Evid. 702(b). “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a).” slip op. at 27

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

    “Pisanich meet the elements of claims 1, 3, 5, 7–12, and 23–26. Pet. 12–36. Patent Owner opposes. PO Resp. 14–43. Because we conclude that Petitioner has failed to show by a preponderance of the evidence that Pisanich accounts for the claimed QIE module, we focus our analysis on that limitation. a. “a quantum imaging environment (QIE) module, the QIE module being a software layer that receives, interprets, and manipulates the second content so as to be accessible on different types of devices for use within the virtual thematic environment…” The parties’ arguments and evidence here focus on the “quantum” slip op. at 19

  Patent outcomesUS 10,846,941 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,846,941
• Sony Interactive Entertainment LLC v. Quantum Imaging LLCSome claims unpatentable
  PTAB · Dec 6, 2024 · IPR2023-00954 · APJ James J Mayberry · IPR · Final written decision

  Claims 1, 3, 4, and 7–9 are unpatentable over Angles under §103; claims 5 and 6 were not shown unpatentable over Angles.

  RulingsFinal written decision

  • Expert testimonyOther

    “prosecution history and the amendment changing “held at” to “accessible at,” testimony upon which Patent Owner relies to support its position. Specifically, Dr. Medvidović testifies that a person having ordinary skill in the art would have understood the two phrases to be synonymous because, 1) the amendment was not made to overcome a prior art reference, 2) the applicant did not make a statement disclaiming that “being accessible at” does not encompass “being held at,” and 3) the examiner did not object to the amendment as exceeding the scope of the Specification. See Ex. 2005 ¶ 34. We find that Dr. Medvidović’s conclusion is not supported by his reasoning. First, an amendment made not to overcome a prior art reference does not mean an amendment that does not change the scope of a claim. An applicant is free to amend a claim at any time during prosecution, even an amendment that may expand the scope of a claim (one made not to overcome a prior art rejection). Second, whether “being accessible at” encompasses “being held at” is not the issue—because the scope of one term encompasses the scope of another term does not make the two terms” slip op. at 26

  • ExcludeDenied

    “III. MOTION TO EXCLUDE EVIDENCE Patent Owner moves to exclude Exhibits 1017–1020, 1026, and 1027,” slip op. at 83

  • Skill levelOther

    “B. Level of Ordinary Skill in the Art The level of skill in the art is “a prism or lens” through which we view” slip op. at 15

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “Accordingly, we conclude that the plain and ordinary meaning of the” slip op. at 27

  Patent outcomesUS 8,458,028 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,458,028
• Godberson-Smith Construction Company D/B/A Gomaco Corporation v. Guntert & Zimmerman Const. Div., Inc.Instituted
  PTAB · Nov 14, 2024 · PGR2024-00026 · APJ Hyun J Jung · PGR · Institution

  Instituted PGR on claims 1–7 and all grounds because Petitioner showed it was more likely than not that at least one challenged claim lacks written-description support.

  RulingsInstitution decision

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

    “At this stage, Petitioner’s arguments, cited portions of the Specification, and supporting testimonial evidence demonstrate that it is more likely than not that claims 1–7 are unpatentable.” slip op. at 20

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDecided for petitioner

    “patent describes that “angular position transducer 78 is placed on top of swing leg pivot shaft 24” and that “pivot shaft 24 is rotationally fixed to the connector plate and duplicates the angular movements of swing leg 20 about the pivot shaft.” Ex. 1001, 12:15–16, 12:20–22, Figs. 5, 7. The ’723 patent also describes that “[a]ngular position transducer 78 is mounted inside . . . protective can 90 . . . which is bolted to hinge bracket 28 via an upright holding arm 92” and that “trigger pin 94 projects upwardly from the top surface of pivot shaft 24 and cooperates with angular position transducer 78 to generate an angular position signal.” Id. at 12:28–33, Fig. 5. These descriptions expressly convey that angular position transducer 78 is on pivot shaft 24 and mounted inside protective can 90 that is bolted to hinge bracket 28. Id. at 12:15–16, 12:20–22, 12:28–30, Figs. 5, 7; see also Prelim. Resp. 17 (describing the same embodiment shown in Figs. 5 and 7). According to Petitioner, the ’723 patent describes the pivot shaft as part of the hinge bracket, not the modular frame or swing leg. Pet. 109–110 (citing Ex. 1001, 7:42–46, 12:17–22). On the preliminary record, we agree because the cited portions of the Specification describe that a “hinge bracket is interposed between each swing leg and an associated surface of the bolsters and includes a fixed, upright pivot shaft that pivotally engages the swing leg for pivotal movements” and “pivot shaft 24 is rotationally fixed to the connector plate.” Ex. 1001, 7:42–45, 12:20–21. We also agree that “even if one were to find that the hinge bracket is part of either the modular frame or swing leg (contrary to the claims and specification treating these all as separate components), the specification would only provide written description for one of the claimed alternatives.” Pet. 110 (citing Ex. 1002 ¶ 199).” slip op. at 19

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

    “At this preliminary stage, we determine that express claim interpretation is not necessary to determine whether it is more likely than not that at least one of the claims challenged in the petition is unpatentable. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 16

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

    “We will also not use our discretion under § 325(d) to deny the Petition based on arguments previously presented in IPR2021-00135, because Petitioner relies on a Board determination regarding claim 8 from IPR2021- 00136, not arguments previously made for claim 1 in IPR2021-00135. Pet. 111–115, 119; Prelim. Resp. 8–9; Prelim. Sur-reply 5. Furthermore, we determined the effective filing date of claim 8 of the ’571 patent without deciding, that other challenged claims, such as claim 1, were entitled to their earliest possible effective filing date. See Godberson-Smith, Paper 61 at 11, 12.” slip op. at 12

  Claim construction§ 112 disclosureDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,772,723
• Godberson-Smith Construction Company D/B/A Gomaco Corporation v. Guntert & Zimmerman Const. Div., Inc.Instituted
  PTAB · Nov 14, 2024 · IPR2024-00835 · APJ Hyun J Jung · IPR · Institution

  The Board instituted IPR of claims 1–8 on all asserted grounds, finding a reasonable likelihood that claim 1 would be unpatentable over CIII and Rio.

  RulingsInstitution decision

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

    “Advanced Bionics stated that: If, after review of factors (a), (b), and (d), it is determined that the same or substantially the same art or arguments previously were presented to the Office, then factors (c), (e), and (f) relate to whether the petitioner has demonstrated a material error by the Office. Factor (c) focuses on the record developed by the Office in previously reviewing the art or arguments. It informs, therefore, the petitioner’s showing under factors (e) and (f), which focus on the petitioner’s evidence of previous Office error regardless of the context in which the same or substantially the same art or arguments were previously presented. For example, if the record of the Office’s previous consideration of the art is not well developed or silent, then a petitioner may show the Office erred by overlooking something persuasive under factors (e) and (f). On the other hand, if the alleged error is a disagreement with a specific finding of record by the Office, then ordinarily the petitioner’s required showing of material error must overcome persuasively that specific finding of record. That is, although Becton, Dickinson factor (c) evaluates “the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection,” the focus should be on the record when determining whether the Office erred in evaluating such art or arguments.” slip op. at 10

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

    “d) Petitioner Shows a Reasonable Likelihood of Prevailing Based on the preliminary record, Petitioner shows a reasonable likelihood of prevailing in its challenge that CIII and Rio teach, suggest, or would have been understood to disclose the limitations of claim 1 and that one of ordinary skill in the art would have combined the references in the manner asserted with a reasonable expectation of success.” slip op. at 28

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

    “track” that “is configured to rotate . . . relative to the jacking column,” Petitioner proposes modifying CIII in view of Rio “by positioning Rio’s rotary actuator 44 between the jacking column and crawler track, and using that rotary actuator to rotate CIII’s crawler track relative to the entire jacking column, rather than just its outer cylinder.” Pet. 45 (citing Ex. 1002 ¶ 89) (emphasis added); see also id. at 47 (citing Ex. 1002 ¶ 92; Ex. 1006, 5:8–11, 6:2–6). Petitioner argues such a modification would have been a design choice, one of a finite number of alternatives, obvious to try, and a known design that provides maneuverability. Id. at 29–31 (citing Ex. 1002 ¶¶ 61–67; Ex. 1006, 5:8–11; Ex. 1007, 5:14–59, Figs. 4–5; Ex. 1008, 7:35– 53, Figs. 7, 20; Ex. 1009 ¶¶ 5, 19–20, Fig. 2; Ex. 1011, 4:7–16, Fig. 3; Ex. 1013 ¶¶ 41, 44–45). At this stage, Petitioner’s arguments and cited evidence sufficiently support for institution that the modification would have been made so that the proposed combination would have had “a crawler track” that “is configured to rotate . . . relative to the jacking column.” Regarding claim 1’s “slew drive,” as discussed above, Petitioner proposes modifying CIII so that rotary actuator 44, the asserted slew drive, would be between the jacking column and crawler track. See Pet. 29–31. Petitioner also argues that, in the proposed combination, “actuating the rotary actuator causes the crawler track to rotate relative to the entire jacking column.” Id. at 47 (citing Ex. 1002 ¶ 92). The present record supports Petitioner’s argument that Rio’s worm gear actuator would have been understood to disclose a slew drive with support from the ’318 patent itself, the opinion of its declarant, and deposition testimony of Patent Owner’s expert in related litigation. Id. at 46–47 (citing Ex. 1001, 11:40–61; Ex. 1002 ¶ 91; Ex. 1006, 4:61–5:3; Ex. 1032, 84:12–86:17). At this stage, the cited evidence sufficiently supports for purposes of institution Petitioner’s argument that the proposed combination would have included the recited “slew drive.”” slip op. at 28

  • Skill levelSkill level petitioner adoptedOther

    “had at least a four-year degree in mechanical engineering or a closely related field and at least two years of experience designing, developing, or operating heavy machinery, including their components and control systems.” Pet. 8– 9 (citing Ex. 1002 ¶¶ 22–24). Petitioner also argues that “[a]dditional experience could substitute for a formal degree, and an advanced degree could substitute for experience.” Id. at 9 (citing Ex. 1002 ¶¶ 22–25). Petitioner states that “[t]he Board adopted this definition of the level of ordinary skill for the related ’749 patent.” Id. (citing Godberson-Smith Const. Co. v. Guntert & Zimmerman Const. Div., Inc., IPR2020-01698, Paper 80, 21–24 (PTAB Apr. 12, 2022) (Final Written Decision)). For purposes of its Preliminary Response, Patent Owner applies Petitioner’s proposed level of ordinary skill in the art. Prelim. Resp. 13 (quoting Pet. 8–9). Based on the preliminary record, we adopt Petitioner’s asserted level of ordinary skill to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. Pet. 8–9; Godberson-Smith, Paper 80 at 21–24 (determining level of ordinary skill after considering the parties’ competing proposals and evidence).” slip op. at 13

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,535,318
• Profrac Holding Corporation / U.S. Well Services, LLC v. Halliburton Energy Services, Inc.All claims unpatentable
  PTAB · Oct 29, 2024 · PGR2023-00023 · APJ Brent M Dougal · PGR · Final written decision

  Claims 1–20 are unpatentable under §101 as directed to an abstract idea without significantly more; the Board did not reach the asserted §103 grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have had a B.S. in Chemical Engineering, Mechanical Engineering, Materials Science, or Metallurgical Engineering or an equivalent field and at least two years of academic or industry experience in the oil and gas industry, including experience with process control systems. Further, a person with additional education but less professional experience, and vice-versa, may qualify. Pet. 23–24 (citing Ex. 1003 ¶ 4). Patent Owner adopts Petitioner’s definition. PO Resp. 6. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’058 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 5

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

    “In post-grant review, we construe claims using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.200(b) (2022). Neither Petitioner, nor Patent Owner, provides constructions of any claim terms. Pet. 25; PO Resp 6–7. We determine that no terms need to be construed. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 5

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “formation response data comprising data from one or more downhole sensors or surface sensors” and “selecting a representative system model based on the received formation response data and sequence of stimuli” are mental processes. We determine that the record supports that they are. The Background of the ’058 patent supports our finding that these steps are mental processes. In particular, the ’058 patent teaches that it was known that “a technician may review sensor data” and that “a representative system model may be used for determining pump settings based on sensor information; however, the representative system model is typically manually selected by a technician based on observed sensor data.” Id. at 22 (quoting Ex. 1001, 1:9–26); see also Dec. 23–24 (preliminarily finding these claimed patent). Regarding the claimed step of “controlling an electrical fracturing pump based on the representative system model,” Patent Owner does argue, and we agree, that it is not a mental process in that one of ordinary skill in the art would not have performed it in the human mind. PO Resp. 27. We also agree that the Petition does not expressly argue that the step of “generating a sequence of stimuli for application to a well environment” is a mental process. However, the ’058 patent explains that these two steps may be performed via a generic computer. Ex. 1001, 6:6–36, 6:65–7:33, 8:56–9:28. Requiring the use of a computer does not change the focus of the claim away from being directed towards an abstract idea. “[T]he inability for the human mind to perform each claim step does not alone confer patentability.” FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1098 (Fed. Cir. 2016) (“As we have explained, ‘the fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.’” (quoting Bancorp Servs. v. Sun Life Assur. Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012)). See also Miller Mendel, Inc. v. City of Anna, Texas, 107 F.4th 1345, 1353 (Fed. Cir. 2024). (“We are not persuaded that claim 1 cannot be directed to an abstract idea even if certain steps cannot be completed in the mind or by pen and paper. . . . [R]equiring the use of a computer alone does not change the focus of a claim directed towards an abstract idea into one directed towards ‘a specific improvement to computer functionality.’ In re TLI Commc'ns LLC Pat. Litig., 823 F.3d 607, 612 (Fed. Cir. 2016).”” slip op. at 10

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “4. Step 2B Under Step 2B, only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, [and] conventional” in the field; or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. 2019 Revised Guidance, 84 Fed. Reg. at 56. applying the … abstract idea using techniques that are, whether considered individually or as an ordered combination, well-understood, routine, and conventional.’ cxLoyalty Inc. v. Maritz Holdings Inc., 986 F.3d 1367, 1377 (Fed. Cir. 2021).” Pet. 97. The Petition cites the Background of the ’058 patent to support its argument that the specification admits that many of the claimed steps were known. Id. at 91. In the oil and gas industry, electric frac pumps are often controlled in order to achieve certain downhole environment responses. However, typically settings are performed manually based on manually appraised information retrieved from the downhole environment. For example, a technician may review sensor data and, based on experience, adjust various settings such as flow rate, pressure values, chemical compositions, etc., on an electric frac pump. In some cases, a representative system model may be used for determining pump settings based on sensor information; however, the representative system model is typically manually selected by a technician based on observed sensor data. Additionally, the representative system model may be a static construct and may not accurately reflect the well to which it has been deployed. Ex. 1001, 1:9–26 (emphasis added). From the above, it will be understood that much of claim 1 was well-understood, routine, and conventional, whether considered individually or as an ordered combination. The above paragraph makes clear that “controlling an electrical fracturing pump based on the representative system model” was known and conventional. In addition, adjusting settings on an electrical fracturing pump is also how the ’058 patent teaches to generate a sequence of stimuli. Ex. 1001, 2:25–33 (“A given stimulus of the sequence of stimuli can be achieved by adjusting . . . flow rates . . . . In some examples, a sequence can include a various amplitudes (e.g., high, medium, low, etc.).”). Thus, generating a sequence of stimuli is also acknowledged as being known in the Background. See also Dec. 22–23 (preliminarily finding that these limitations were known). Petitioner provides additional argument that other references also show that these limitations were known. See e.g., Pet. 94. However, it is not necessary for us to review these in view of the express acknowledgement of the state of the art in ’058 patent. Based on the record, we determine that claim 1 does not include any specific limitation beyond the judicial exception that is not “well-understood, routine, [and] conventional” in the field.” slip op. at 15

  Patent outcomesUS 11,373,058 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Enfish · Graham
  Patents in suitUS 11,373,058
• Ericsson Inc. / Nokia Of America Corporation v. XR Communications LLCInstituted
  PTAB · Oct 9, 2024 · IPR2024-00613 · APJ James J Mayberry · IPR · Institution

  The Board instituted IPR on claims 1–5, 8–12, and 15–19 because Petitioner showed a reasonable likelihood that the claims are obvious over Agee.

  RulingsInstitution decision

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

    “(4) Analysis and conclusion as to the processor configuration limitations For the reasons below, after considering Patent Owner’s arguments, we determine that Petitioner has demonstrated, sufficient for institution, that Agee teaches or suggests a processor configured as recited in limitations [1.3]–[1.8]. We do not agree with Patent Owner that Petitioner does not present a coherent theory for how Agee teaches or suggests the subject matter of limitations [1.3]–[1.6]. Although we recognize that the Petition provides discussions on alternative disclosures in Agee, we determine that the Petition sufficiently presents a theory that coherently treats the subject matter of limitations [1.3]–[1.6]. Specifically, we determine, on the current record, that Petitioner sufficiently demonstrates for institution that Agee teaches or suggests a processor that is configured to receive a first signal transmission at a first antenna element from a remote station and a second signal transmission at a second antenna element from the remote station—a pilot signal. As Petitioner contends, signals transmitted from Agee’s remote station include a pilot signal. Pet. 52. These signals are simultaneously sampled at multiple antenna elements. Id.” slip op. at 24

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

    “stay. See Ex. 3001 (providing the docket sheet for the consolidated litigation and showing item 83, “UNOPPOSED MOTION to Withdraw 78 OPPOSED Motion to Stay PROCEEDINGS,” and item 84, granting the UNOPPOSED MOTION). Because no motion to stay the proceeding is currently pending, we weigh this factor as neutral. We do not speculate as to whether a motion to stay would be renewed and ultimately granted. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020) (informative) (“Fintiv II”) (“We decline to infer . . . how the District Court would rule should a stay be requested by the parties in the parallel case here.”); Sand Revolution II, LLC v. Continental Intermodal Group-Trucking LLC, IPR2019-01393, Paper 24 at 7 (PTAB June 16, 2020) (informative) (“Sand Revolution”) (similar).” slip op. at 33

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner contends that a person having ordinary skill in the art “in November 2002 would have been familiar with wireless communications networks, including the design of beamforming using multiple antennas. Pet. 6. Petitioner contends that a person having ordinary skill in the art would have at least a Bachelor’s degree in Electrical Engineering or equivalent, and at least two years of work experience. Id. at 6–7. Petitioner adds that “[a] more advanced degree can substitute for some work experience.” Id. at 7 (referencing Ex. 1003 ¶¶ 37–39). Patent Owner does not challenge Petitioner’s characterization of the level of ordinary skill in the art at this stage of the proceeding. Prelim. Resp. 8. For the purposes of this Decision, we apply Petitioner’s definition of the level of ordinary skill in the art. We determine that this definition is consistent with the prior art of record and the skill reflected in the Specification of the ’235 patent, and previous proceedings concerning the ’235 patent. See IPR2022-00367, Paper 10 at 24 (PTAB July 14, 2022); IPR2022-01155, Paper 11 at 13–14 (PTAB Jan. 5, 2023).” slip op. at 12

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “A wave interacts with two different antenna elements simultaneously, where the phase and amplitude (signal strength) of the wave is different at each antenna element. Id. ¶¶ 333–336 (cited at Pet. 10–11). We reproduce Dr. Mahon’s figure illustrating this point below. Id. ¶ 336. Dr. Mahon explains that at a given sampling instance, the wave is in the process of propagating across the antenna array and antenna A detects the signal when it is at phase 45 degrees and detects a signal strength of around 0.7 (sin(45°)). Antenna B is physically located such that (sampling at the same time as Antenna A) it detects the same signal at phase 270 degrees and will measure a received signal strength of -1.0 (sin(270°)). If the array summed those two values, the output of the array would in this case be sin(45°) + sin (270°) = 0.7 + -1.0 = -0.3 which is much less than the value at antenna A (0.7) without summation. However, if the sample value at antenna B is adjusted by the “phase shift” or “phase difference” between A and B (i.e., 235°), the sum would be sin(45°) + sin (270° - 235°) = 0.7 + 0.7 = 1.4, which is twice as large as the value at antenna A (0.7) without the coherent summation. Id. ¶ 337. Dr. Mahon testifies that “[t]he Butler matrix purposefully uses these different phases detected simultaneously by the antennas.” Id. ¶ 338. Dr. Mahon explains that the different signal strengths at different antenna elements are measured, and “[t]hese measurements are passed into the circuitry of [phase] shifters and dividers / combiners.” Id. ¶ 342 (included in the Petition at Pet. 14). On the limited record before us, we credit Dr. Mahon’s testimony, for at least the reason that it is consistent with our understanding of Exhibits 1001, 1004, and 1005.” slip op. at 25

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 10,715,235
• Nespresso USA, Inc. v. K-Fee System GmbHAll claims unpatentable
  PTAB · Sep 10, 2024 · IPR2023-00502 · APJ Grace Karaffa Obermann · IPR · Final written decision

  Claims 1–16 are unpatentable as obvious over the combined disclosures of Yoakim, Jarisch, and Rapparini.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner

    “To obtain the benefit of the filing date of an earlier application, Patent Owner bears the burden of producing evidence to establish where each limitation of the challenged claims is disclosed in a single priority application. Studiengesellschaft Kohle, 112 F.3d at 1564; NTP, 654 F.3d at 1276. Petitioner identifies limitations of the challenged claims that are missing from each individual German priority application. Pet. 39–42. Patent Owner responds with no evidence or arguments suggesting that the identified limitations are disclosed in a single application. Resp. 10–12. On this record, no challenged claim is entitled to the benefit of the filing date of any of the three German priority applications; therefore, Jarisch qualifies as prior art under at least 35 U.S.C. § 102(e).” slip op. at 19

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “In other words, even if we accept that Dr. Howle has some experience designing medical devices and components, and that those experiences represent work designing products similar to mechanical beverage systems, Patent Owner fails to direct the Board to evidence sufficient to establish that this experience, in the aggregate, amounts to “at least five years” or involved “experience with sensors for recognizing identifiers.” Dec. 8 (adopting Patent Owner’s own proposed definition of ordinary skill in the art); see Sur-reply 3 (citing Ex. 1066, 34:16–35:9; Ex. 1067, 101:3–12, 102:30– 104:9; Ex. 2017 ¶¶ 3, 4) (failing to establish adequately, if at all, how Dr. Howle’s qualifications include the requisite minimum five-year period of relevant design experience). Accordingly, we determine that Dr. Howle is not qualified to offer expert testimony from the perspective of a person having ordinary skill in the art in this proceeding.12 Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1376–78 (Fed. Cir. 2022). The Federal Circuit has made plain that, “[t]o offer expert testimony from the perspective of a skilled artisan in a patent case,” including the issue of patent “validity,” the “witness must at least have ordinary skill in the art.” 12 To be clear, we are not saying that a witness supplying expert opinions must have satisfied the requirements of the level of ordinary skill in the art on or before the priority date of the challenged patent, which Patent Owner seems to understand. See Sur-reply 4–5. Instead, we evaluate whether Dr. Howle had at least the requisite qualifications of a person having ordinary skill in the art by the time he rendered his opinions. Osseo Imaging, LLC v. Planmeca USA, Inc., Appeal No. 2023-1627, slip op. at 7 (Fed. Cir. Sept. 4, 2024) (“[A]n expert can acquire the necessary skill later and develop an understanding of what a person of ordinary skill knew at the time of the invention,” however, where “the expert was not a person of ordinary skill at the time of the invention may well be used during cross-examination to undermine the credibility of the expert.”); see id., slip op. at 5–6 (affirmatively quoting Kyocera). Id. (Board’s emphasis). “Without that skill, the witness’[s] opinions are neither relevant nor reliable.” Id. at 1377. “‘Admitting testimony from a person . . . with no skill in the pertinent art serves only to cause mischief and confuse the factfinder.’” That testimony would ‘amount[ ] to nothing more than advocacy from the witness stand.’” Id. (quoting Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362, 1364–65 (Fed. Cir. 2008)). Alternatively, even if we accept that Dr. Howle possesses “at least five years” of relevant design experience, on this record, we agree with Petitioner that his opinions are entitled to less weight than those of Petitioner’s witness, Mr. Jobin. Reply 27. Unlike Dr. Howle, Mr. Jobin is a designer by profession, with more than 30 years of industry experience. Reply 27 (citing Ex. 1003 ¶¶ 5–30). For example, Mr. Jobin designed a home-based beer dispensing system utilizing cartridge identification technologies. Id. (citing Ex. 1003 ¶ 24). Mr. Jobin also “has substantial experience with sensors for recognizing identifiers.” Id. (citing Ex. 1003 ¶ 19; Ex. 1072, 3712–19, 67:22–70:19). Dr. Howle, by contrast, “has never designed a beverage machine.” Reply 22; see generally Sur-reply (declining to contest that assertion).13” slip op. at 14

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

    “In Petitioner’s contrary view, Jarisch teaches how to move a code in a centrifugal brewing system to the bottom of the flange and how to configure a light-conductive material so that the detector’s light source will reach the bottom of the flange. Pet. 45–46; Reply 21–22 (Ex. 1003 ¶¶ 194–195; Ex. 1005 ¶¶ 82–84, Fig. 5). Although Figure 61 of Yoakim discloses a flare in its brewing chamber, bodily incorporation is not required, and we are directed to no persuasive argument or evidence that Yoakim could not be configured with a straight chamber, as depicted in Figure 5 of Jarisch. We credit the testimony of Mr. Jobin that a person of ordinary skill in the art would have sought to place the code at the bottom of the flange and would have had a reasonable expectation of success in so doing. Ex. 1003 ¶ 184. For reasons explained above, we assign little or no weight to Dr. Howle’s conflicting testimony because he has little or no experience designing a mechanical beverage system or similar product. See supra 10– 16. Petitioner lays out persuasive reasons why Dr. Howle’s testimony, on this particular point, is “conclusory” and rests on “bodily incorporation” of the references. Reply 24; see id. at 22–24 (pointing out with particularity fundamental flaws in Dr. Howle’s opinions); In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.”); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”). In addition, Patent Owner contends that Yoakim requires that the capsule holder be capable of receiving a set of multiple volume capsules and that there is a “snug fit” to avoid “unbalances.” Sur-reply 8 (citing Ex. 1004 ¶¶ 205, 479, 484, 507, 512). According to Patent Owner, Petitioner does not explain adequately how the use of Jarisch’s “straight chamber” with a capsule holder that does not engage with the side wall of the capsule would allow insertion of multiple volume capsules or permit a “snug fit” in the modified device of Yoakim. Id. at 8–9. Patent Owner’s view that Yoakim discloses the use of certain capsules which might not fit into a device with Jarisch’s non-flared structure is ineffective to undercut the sufficiency of Petitioner’s showing on this point. Petitioner is not seeking a bodily incorporation of Yoakim and Jarisch and, in any event, other embodiments of Yoakim do not require the type of flared capsule identified by Patent Owner. Ex. 1004, Fig. 63. Furthermore, we credit the testimony of Mr. Jobin that one of ordinary skill in the art would have understood how to design the chamber of Yoakim to allow reading of a barcode on the underside of the flange. Ex. 1003 ¶¶ 187–195. With respect to the argument that the use of Jarisch’s design would not allow a snug fit, we are directed to no persuasive evidence that Jarisch’s lack of contact between the capsule side wall and the holder would render the device inoperable or less effective. Resp. 39–40; see Reply 22 (citing Ex. 2019, 36:18–37:6). Indeed, as Petitioner points out, Jarisch indicates that its device, including its capsule holding means, allows the capsule to be successfully driven in rotation. Reply 22 (citing Ex. 1005 ¶ 23).” slip op. at 49

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “That argument is not persuasive. A reference need not identify or discuss another prior art patent or application in order for that reference to be deemed relevant or analogous art. Nor do we endeavor to determine why, or why not, a particular reference is discussed in a prior art reference. The analogous art inquiry focuses on reasonable pertinence and involves assessing the similarities between the claimed invention and the prior art, including the problems addressed and the closeness of the subject matter, as viewed by an ordinarily skilled artisan. Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 1360 (Fed. Cir. 2020); see Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374, 1380-81 (Fed. Cir. 2019) (relevant analysis focuses on comparing the disclosed embodiments, function, and structure of the claimed invention to the disclosures of the prior art). Against that backdrop, we reject Patent Owner’s suggestion that the inquiry involves whether the inventors of Jarisch saw a need to discuss Yoakim’s disclosure in Jarisch’s priority document.” slip op. at 45

  Patent outcomesUS 10,994,923 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,994,923

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.