• Snap Inc. v. Sanderling Management Ltd.Instituted
  PTAB · Nov 9, 2021 · IPR2021-00781 · APJ Timothy J Goodson · IPR · Institution

  The Board instituted IPR on all challenged claims, finding a reasonable likelihood that claims 1, 3, 18, and 20 were obvious over Hogeg and claims 3, 7, 17, 20, 24, and 34 over Hogeg and …

  RulingsInstitution decision

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

    “We agree with Petitioner that this factor weighs against discretionary denial. As Wyze explained, the reason a stay favors institution is because it “allays concerns about inefficiency and duplication of efforts.” Fintiv, Paper 11 at 6. Because the [district] court decided an issue that does not overlap with those presented in this proceeding, and the [district] court is not likely to address the obviousness issues before our final written decision (if it addresses the issues at all), the [district] court’s ruling has allayed any concerns about inefficiency and duplication of efforts between us and the [district] court. Wyze, Paper 14 at 10. The same reasoning applies here. The district court’s judgment of invalidity under § 101 and Patent Owner’s appeal of that judgment virtually assures that the district court will not be considering the same obviousness issues presented in this Petition during the course of this proceeding.” slip op. at 14

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “We agree with Patent Owner that the same or substantially the same art or arguments were previously considered by the Examiner during prosecution of the ’986 patent. There is no dispute that Hogeg was at least considered by the Examiner, even if the Examiner never discussed Hogeg or applied it in a rejection. See Ex. 1002, 502. Advanced Bionics Part One asks whether a reference was previously presented to the Office, not whether the Office formed a rejection based on the reference. See Advanced Bionics, Paper 6 at 7–8 (“Previously presented art includes art made of record by the Examiner, and art provided to the Office by an applicant, such as on an Information Disclosure Statement (IDS).”). Although Petitioner correctly points out that Arujunan was not of record during prosecution of the ’986 patent, Petitioner relies on Hogeg alone for its challenge to claims 1, 3, 18, and 20. See Pet. 11, 18. Under these circumstances, we find Advanced Bionics Part One satisfied because the prior art before the Examiner was substantially the same as the prior art relied on in the Petition.” slip op. at 22

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

    “Based on the current record, we determine that Petitioner has established a reasonable likelihood of prevailing in its contention that claim 1 would have been obvious over Hogeg. 3. Claims 3, 18, and 20 Claim 18 is a system claim that recites many limitations similar to those recited in claim 1. See Ex. 1001, 24:55–25:14. Petitioner contends that Hogeg teaches or renders obvious each of the limitations of claim 18, referring back to its arguments regarding claim 1 for common subject matter. See Pet. 59–65. Claims 3 and 20 recite similar features but depend from different claims: claim 3 depends from claim 1, while claim 20 depends from claim 18. See Ex. 1001, 24:3–7, 25:17–21. Petitioner asserts, with detailed citations to the record, that Hogeg teaches the limitations of claims 3 and 20. See Pet. 57–59, 65. We determine, on the current record, that Petitioner has established a reasonable likelihood of prevailing in its contention that claims 3, 18, and 20 would have been obvious over Hogeg.” slip op. at 33

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends, with accompanying declaration testimony, that a person having ordinary skill in the art “would have had at least a bachelor’s degree, or the equivalent, in electrical engineering, computer science, or a related field, and 2–3 years of experience in research, design, or development of mobile imaging systems and related hardware, software, and firmware, or equivalent experience.” Pet. 21. According to Petitioner, “[a] person with less education but more relevant practical experience, or more education and less experience, may also meet this standard.” Id. (citing Ex. 1003 ¶¶ 173–174). Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the record at this stage of the proceeding, including the prior art. See GPAC, 57 F.3d at 1579. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 26

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,108,986
• Snap Inc. v. Sanderling Management Ltd.Instituted
  PTAB · Nov 9, 2021 · IPR2021-00779 · APJ Eric C Jeschke · IPR · Institution

  The Board instituted IPR on claims 1–11 on all asserted grounds, finding a reasonable likelihood that Snap would prevail on at least one challenged claim.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020) (“The Board institutes the trial on behalf of the Director.”). Section 314(a) of Title 35 of the United States Code provides that an inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the evidence and arguments in the briefing thus far, for the reasons below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus institute inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); PTAB Rules of Practice for Instituting on All Challenged Patent Claims and All Grounds and Eliminating the Presumption at Institution Favoring Petitioner as to Testimonial Evidence (“PTAB Rules”), 85 Fed. Reg. 79,120, 79,120 (Dec. 9, 2020) (to be codified at 37 C.F.R. pt. 42) (“[T]he Board will either institute review on all of the challenged claims and grounds of unpatentability presented in the petition or deny the petition.”).” slip op. at 2

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

    “We agree with Petitioner that this factor weighs against discretionary denial. As Wyze explained, the reason a stay favors institution is because it “allays concerns about inefficiency and duplication of efforts.” Fintiv, Paper 11 at 6. Because the [district] court decided an issue that does not overlap with those presented in this proceeding, and the [district] court is not likely to address the obviousness issues before our final written decision (if it addresses the issues at all), the [district] court’s ruling has allayed any concerns about inefficiency and duplication of efforts between us and the [district] court. Wyze, Paper 14 at 10. The same reasoning applies here. The district court’s judgment of invalidity under § 101 and Patent Owner’s appeal of that judgment virtually assures that the district court will not be considering the same obviousness issues presented in this Petition during the course of this proceeding.” slip op. at 15

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “We agree with Patent Owner that the same or substantially the same art or arguments were previously considered by the Examiner during prosecution of the ’866 patent. There is no dispute that Hogeg was at least considered by the Examiner, even if the Examiner never discussed Hogeg or relied on it in any manner. See Ex. 1002 at 132. Although Petitioner correctly points out that neither Svendsen nor Arujunan was of record during prosecution of the ’866 patent, Petitioner only relies on those references for its challenges to dependent claims 3 and 11. See Pet. 63–77. Petitioner relies on Hogeg alone for its challenge to claims 1, 2, and 4–10. See Pet. 27–63. Under these circumstances, we find the first part of the Advanced Bionics satisfied because the prior art before the Examiner was substantially the same as the prior art relied on in the Petition.” slip op. at 23

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends, with accompanying declaration testimony, that a person having ordinary skill in the art “at the time of the alleged invention would have had at least a bachelor’s degree, or the equivalent, in electrical engineering, computer science, or a related field, and 2–3 years of experience in research, design, or development of mobile imaging systems and related hardware, software, and firmware, or equivalent experience.” Pet. 23–24. According to Petitioner, “[a] person with less education but more relevant practical experience, or more education and less experience, may also meet this standard.” Pet. 24 (citing Parulski Decl. ¶¶ 186–187). Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the record at this stage of the proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 27

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 9,639,866
• Precision Planting, LLC / Agco Corp. v. Deere & CompanyNo claims unpatentable
  PTAB · Jan 11, 2021 · IPR2019-01054 · APJ James A Tartal · IPR · Final written decision

  Claims 1–4, 6–9, and 11–20 were not shown unpatentable because Petitioner failed to establish a sufficient rationale to combine Hedderwick, Koning, and Benac.

  RulingsFinal written decision

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

    “Critically, neither Petitioner nor Mr. Prairie acknowledge, much less bridge, the gap between Koning’s use of a brush belt with bristles generally facing downward to hold potatoes from above as they lie on a conveying surface, versus the brush belt’s use in the proposed combination to receive seeds that are deposited onto or into the bristles from above. In short, what Petitioner casually calls a “known technique” was not taught or suggested by Koning. Patent Owner explains this issue as follows: Koning does not suggest using a brush-belt for retaining and conveying seeds without a separate conveying member to bear their weight. A [person of ordinary skill in the art] would not predict that Koning’s brush-belt could be used successfully for that purpose because, inter alia, a [person of ordinary skill in the art] would not predict that Koning’s belt would successfully receive, retain or convey small seeds on its own due to the unique and unpredictable dynamics of such a belt. Ex. 2203, ¶¶ 136– 138, 164–167. Fundamentally, Koning’s belt, which is intended to steady potatoes while they are conveyed, is not a conveyor belt. Instead, it is a moving belt positioned over top of the potatoes; not intended to support their weight. Petitioners are thus not suggesting using a “familiar element according to known methods” to “yield predictable results.” Cf. KSR, 550 U.S. at 401.” slip op. at 33

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedOther

    “The basis for Mr. Prairie’s opinion, that a seed would be captured by a moving brush belt in the proposed combination, appears to only be the prior art references themselves. Ex. 2193, 214:6–14, 118:7–23. Mr. Prairie testified that he “did not operate a brush belt for this declaration because [he] didn’t feel it was necessary to make my assessments” and he “did not do study or experimentation on a brush belt as I did not feel it was necessary.” Ex. 2263, 79:17–19, 80:2–4. Mr. Prairie’s reliance on the prior art to support his conclusions is unpersuasive because Mr. Prairie does not account for the differences discussed above between the cited references’ usage of brush belts compared to the way it is used in the proposed combination. In particular, as relevant to the discussion here, Koning does not teach using a brush belt to capture seeds that have been released from above. Mr. Prairie does not account for that difference by explaining why an ordinarily skilled artisan would expect Koning’s brush belt to effectively capture and carry seeds released from above, as in the proposed combination.” slip op. at 34

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “mechanical engineering, agricultural engineering, or a related field; or (2) a master’s degree plus two years of experience in mechanical engineering, agricultural engineering, or a related field.” Pet. 39 (citing Ex. 1002 ¶¶ 21, 22). Mr. Prairie opines this same level of ordinary skill, but adds the additional sentence that such an “ordinary artisan would have been familiar with the mechanics and design of agricultural planters.” Ex. 1002 ¶ 22. Mr. Prairie does not disclose the underlying facts or data on which his opinion is based. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); TQ Delta, LLC v. Cisco Sys., Inc., 942 F.3d 1352, 1358 (Fed. Cir. 2019) (“Conclusory expert testimony does not qualify as substantial evidence.”) (citations omitted). According to Patent Owner, a person of ordinary skill in the art would have had an undergraduate degree in mechanical engineering, agricultural engineering, or closely related field, and “about two years of experience designing agricultural products or related machinery in industry or academia,” or, alternatively, “about five years of experience designing agricultural products or related machinery, without a four-year undergraduate engineering degree.” PO Resp. 2–3 (citing Ex. 2203 ¶¶ 47– 52). Patent Owner adds that “[s]uch a person would typically have experience designing projects on a component or small sub-system-level rather than redesigning a larger planting system.” Id. In support of Patent Owner, Dr. Glancey states that Petitioner’s proposed level of ordinary skill is “too restrictive and sets the level of ordinary skill in the art of the ’173 [p]atent too high.” Ex. 2203 ¶ 49. Dr. Glancey provided the following reasons: (1) undergraduate engineering curriculums in place in February 2009 focused on design at the freshman level and continued this focus throughout the student’s degree program, thus avoiding the need for significant post-graduate design experience; (2) masters programs in engineering focus on research for publication in peer-reviewed journals, rather than designing products for industry; and (3) engineering technicians, who may not have formal engineering degrees, “often have years’ worth of relevant hands-on experience” that corresponds to a person of ordinary skill in the art. Id. ¶¶ 50–52. Based on the evidence and arguments of record prior art, we determine that a person of ordinary skill in the art would have had an undergraduate degree in mechanical engineering, agricultural engineering, or similar field, and two years of experience designing agricultural products or related machinery, or five years of experience designing agricultural products or related machinery, without a four-year undergraduate engineering degree. To the extent there is any inconsistency, we credit the testimony of Dr. Glancey over Mr. Prairie because Dr. Glancey’s opinion was more supported with more persuasive analysis and reasoning, as summarized above. However, we note that the differences between the parties’ proposed definition of the level of ordinary skill in the art are not determinative. The analysis below would be materially the same under either party’s proposed definition.” slip op. at 16

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

    “We determine that no terms require express construction to resolve the parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only claim terms that are in controversy need to be construed and “only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 18

  Patent outcomesUS 10,004,173 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,004,173
• Precision Planting, LLC / Agco Corp. v. Deere & CompanyNo claims unpatentable
  PTAB · Dec 15, 2020 · IPR2019-01055 · APJ Timothy J Goodson · IPR · Final written decision

  Claims 1–8, 10, 12–17, 19, and 20 were not shown unpatentable over Hedderwick, Koning, and Benac because Petitioner did not establish motivation to combine or a reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedPetitioner expert discountedDecided for patent owner

    “would have had either: (1) a bachelor’s degree plus four years of experience in mechanical engineering, agricultural engineering, or a related field; or (2) a master’s degree plus two years of experience in mechanical engineering, agricultural engineering, or a related field.” Pet. 45 (citing Ex. 1002 ¶¶ 19–20). In the testimony the Petition cites in support of that proposal, Mr. Prairie lists factors that are typically considered in assessing the level of ordinary skill in the art, and then states “[b]ased on these factors as well as my experience and expertise,” his opinion of the level of ordinary skill in the art is the same as Petitioner proposes. Ex. 1002 ¶¶ 19–20. This conclusory testimony is entitled to little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). slip op. at 12

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

    “We determine that no terms require express construction to resolve the parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claim terms need only be construed “to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 14

  • Obviousness (§103) › Analogous artNot reached

    “Patent Owner counters that Koning does not qualify as analogous art and, relatedly, that judicial estoppel bars Petitioner from contending otherwise. PO Resp. 7–17. Patent Owner further argues that an ordinarily skilled artisan would not have been motivated to combine Koning’s belt with Hedderwick and Benac, and would not have expected that combination to succeed. Id. at 18–33; Sur-Reply 13–19. Patent Owner also challenges the motivation and reasonable expectation of success for the incorporation of Owner argues that incorporating Benac’s paddle wheel would not yield a “nip” as claimed. PO Resp. 49–61; Sur-Reply 29. Patent Owner also submits evidence of objective indicia of nonobviousness. PO Resp. 61–98; Sur-Reply 2–10. 2. Motivation to Combine and Reasonable Expectation of Success Of the disputed issues summarized in the preceding section, our analysis focuses on whether an ordinarily skilled artisan would have been motivated to combine the references in the manner Petitioner proposes and would have reasonably expected success in doing so. Because those issues are dispositive of Petitioner’s challenge, it is unnecessary for us to resolve the other disputed issues. See, e.g., Adidas AG v. Nike, Inc., 963 F.3d 1355, 1359 (Fed. Cir. 2020) (affirming Board’s determination that claims were not shown to be obvious because the petitioner had not demonstrated that an ordinarily skilled artisan would have been motivated to combine the references); Samsung Electronics Co. v. Elm 3DS Innovations, LLC, 925 F.3d 1373, 1383 (Fed. Cir. 2019) (determining that it is unnecessary to reach other issues when reasonable expectation of success is dispositive).” slip op. at 22

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

    “between the references’ use of a brush belt as an endless member and paddle wheels versus the proposed combination. Moreover, Patent Owner points out problems ordinarily skilled artisans would have encountered in attempting to combine the references as Petitioner proposes. Petitioner does not persuasively explain how those issues could have been overcome, and instead simply asserts, essentially, that ordinarily skilled artisans could have figured it out. See, e.g., Ex. 1135 ¶ 78 (“[A] person of ordinary skill in the art would have determined through no more than routine experimentation how to orient Benac’s paddle wheel so that it could operate with Koning’s brush belt bristles to pinch seeds from the seed meter.”). It is Petitioner’s burden to establish that ordinarily skilled artisans would have been motivated to combine the references in the proposed manner and would have reasonably expected success in doing so. See 35 U.S.C. § 316(e); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016). Petitioner’s arguments and evidence do not carry that burden.” slip op. at 28

  Patent outcomesUS 9,699,955 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,699,955
• Precision Planting LLC / Agco Corporation v. Deere & CompanyNo claims unpatentable
  PTAB · Dec 2, 2020 · IPR2019-01048 · APJ Barry L Grossman · IPR · Final written decision

  Claims 1–20 were not proven unpatentable over Hedderwick and Koning because Petitioner did not establish a persuasive motivation to combine the references as proposed.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Based on the prior art, Dr. Glancey’s opinion testimony and analysis, and providing some, but minimal, weight to Dr. Taylor’s opinion testimony, we determine that the evidence favors Patent Owner’s proposed level of skill, primarily based on Dr. Glancey’s analysis and reasons summarized above. Accordingly, we determine that a person of ordinary skill in a technology pertinent to the challenged claims would have had an undergraduate degree in mechanical engineering, agricultural engineering, or similar field, and two years of experience designing agricultural products or related machinery, or five years of experience designing agricultural products or related machinery, without a four-year undergraduate engineering degree. A recipient of other academic degrees may qualify as a person of ordinary skill if they have taken coursework or have experience in the pertinent technology. Additional education could offset less work experience; additional work experience could offset less education or coursework.” slip op. at 18

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

    “[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We determine that an explicit construction of the claims is not necessary for the purposes of determining whether the challenged claims are not patentable. slip op. at 20

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

    “sufficiently persuasive evidence, even in combination, to establish why a person of ordinary skill would have modified Hedderwick by (1) selectively gleaning only a portion of Koning’s conveying system, i.e., belt 44 with bristles 45, (2) selectively excluding Koning’s belt 23, and then (3) modifying Koning’s brush belt by reversing its orientation so that it carries seeds deposited into the bristles, as in the ’906 patent, rather than covering and guiding seeds carried by a separate and distinct conveyor belt, as in Koning. See WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016) (finding an absence of a motivation to reverse parts to an orientation that was “totally backwards” from what one of skill in the art would even attempt). Petitioner’s arguments do not acknowledge the different function of Koning’s brush belt, or explain why a person of ordinary skill would have been motivated to adapt Koning’s brush belt to such a use and reasonably expect success in doing so. We determine Petitioner fails to meet its burden of providing a sufficiently persuasive explanation or reason for concluding that one of skill in the art would have combined these particular references to produce the claimed invention. “Without any explanation as to how or why the references would be combined to arrive at the claimed invention, we are left with only hindsight bias.” Metalcraft v. Toro, 848 F.3d at 1367. “[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.” Id.” slip op. at 30

  • ExcludeOther

    “II. MOTION TO EXCLUDE Petitioner and Patent Owner each move to exclude a substantial number of exhibits on a number of different evidentiary grounds. See Pet. Mot. Excl.; PO Mot. Exclude. As our analysis does not refer to any of those exhibits, we dismiss each motion as moot.” slip op. at 12

  Patent outcomesUS 9,686,906 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,686,906
• Precision Planting, LLC / Agco Corp. v. Deere & CompanyNo claims unpatentable
  PTAB · Nov 30, 2020 · IPR2019-01044 · APJ Timothy J Goodson · IPR · Final written decision

  Claims 1–8 were not shown unpatentable under § 103 over Hedderwick, Koning, and Benac because Petitioner did not establish motivation to combine or a reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedPetitioner expert discountedDecided for patent owner

    “have had either (1) a bachelor’s degree plus four years of experience in mechanical engineering, agricultural engineering, or a related field or (2) a master’s degree plus two years of experience in mechanical engineering, agricultural engineering, or a related field.” Pet. 42 (citing Ex. 1002 ¶¶ 19– 20). In the testimony the Petition cites in support of that proposal, Mr. Prairie lists factors that are typically considered in assessing the level of ordinary skill in the art, and then states “[b]ased on these factors together with my experience and expertise,” his opinion of the level of ordinary skill in the art is the same as Petitioner proposes. Ex. 1002 ¶¶ 19–20. This conclusory testimony is entitled to little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 12

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

    “construed 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).” See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)).6 That standard “includ[es] 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.” Id.; see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). We determine that no terms require express construction to resolve the parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claim terms need only be construed “to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review). V. OBVIOUSNESS OVER HEDDERWICK, KONING, AND BENAC” slip op. at 14

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Patent Owner’s expert, Dr. Glancey, explains that [i]f a wheel is used to load and place seeds within a moving belt with brush hairs, the wheel must be able to disengage from seeds while the seeds remain in between brush hairs. If the wheel maintains contact with the seed after the seed has moved into the brush hairs, the wheel will continue to apply force to the seed and eject or remove the seed from the profile of the brush hairs . . . . Ex. 2200 ¶ 223. Dr. Glancey testifies, credibly, that in Petitioner’s combination, seeds would have been rejected from the belt because, as the paddle wheel rotates, seeds “would be scooped through the belt.” Id. ¶ 225.” slip op. at 31

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

    “way the references use endless members in the form of brush belts and paddle wheels, versus the way Petitioner uses those components in the proposed combination. Contrary to Petitioner’s and Mr. Prairie’s assertions, the proposed combination does not merely apply known techniques to a known device, because none of the cited references use brush belts and paddle wheels in the manner Petitioner proposes. As discussed in greater detail below, Benac teaches that a paddle wheel can be used to ensure that seeds jammed in vacuum holes are released reliably, and then dropped to the ground. Benac does not address brush belts as an endless member and, therefore, does not teach that paddle wheels can be used to guide seeds into the bristles of a brush belt, as Petitioner proposes. See Pet. 64. And Koning does not teach a brush belt that captures seeds released from above, as Petitioner and Mr. Prairie propose. See Pet. 61–62; Ex. 1002 ¶ 104; Ex. 2193, 190:10–191:3; Ex. 2263, 167:21–170:9. Rather, Koning’s brush belt maintains the relative position of potatoes lying on a conveying surface by holding them from above while the conveyor moves them to the furrow. Ex. 1004, 3:16–24, 5:3–14, Fig. 4. Petitioner’s arguments do not adequately account for these differences between the references’ use of a brush belt as an endless member and paddle wheels versus the proposed combination. Moreover, Patent Owner points out problems ordinarily skilled artisans would have encountered in attempting to combine the references as Petitioner proposes. Petitioner does not persuasively explain how those issues could have been overcome, and instead simply asserts, essentially, that ordinarily skilled artisans could have figured it out. See, e.g., Ex. 1135 ¶ 80. It is Petitioner’s burden to establish that ordinarily skilled artisans would have been motivated to combine the success in doing so. See 35 U.S.C. § 316(e); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016). Petitioner’s arguments and evidence do not carry that burden.” slip op. at 28

  Patent outcomesUS 8,813,663 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,813,663
• Precision Planting, LLC / Agco Corp. v. Deere & CompanyNo claims unpatentable
  PTAB · Nov 30, 2020 · IPR2019-01046 · APJ Timothy J Goodson · IPR · Final written decision

  Claims 1 and 3 were not shown unpatentable over Hedderwick, Koning, and Yamahata under § 103 because Petitioner did not establish motivation to combine or a reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Based on the evidence and arguments of record, we determine that the evidence favors Patent Owner’s proposed level of skill. Our determination is primarily based on Dr. Glancey’s analysis and reasons summarized above, as well as the prior art of record and the sophistication of the technology of the ’199 patent. We have considered Mr. Prairie’s opinion, but we give that testimony minimal weight due to the lack of supporting explanation. Accordingly, we adopt Patent Owner’s proposed level of ordinary skill in the art. Specifically, we determine that a person of ordinary skill in agricultural engineering, or a similar field, and two years of experience designing agricultural products or related machinery. Alternatively, a person of ordinary skill in the art would have had five years of experience designing agricultural products or related machinery, without a four-year undergraduate engineering degree.” slip op. at 13

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

    “IV. CLAIM CONSTRUCTION “In an inter partes review proceeding, a claim of a patent . . . shall be construed 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).” See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)).7 That standard “includ[es] 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.” Id.; see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). We determine that no terms require express construction to resolve the parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claim terms need only be construed “to the extent” slip op. at 14

  • BurdenNot shown unpatentable

    “Ex. 1135 ¶ 51. Yet it is Petitioner’s burden to show motivation and reasonable expectation of success for the proposed combination, not Patent Owner’s burden to show that the prior art demonstrates the futility of the proposed combination. See 35 U.S.C. § 316(e); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016). Here, Petitioner’s affirmative showing on motivation and reasonable expectation of success for using Koning’s brush belt in the proposed combination is unpersuasive for the reasons discussed above. And Patent Owner’s evidence of difficulties an ordinarily skilled artisan would have expected to encounter in that proposal serves to highlight the issues that Petitioner’s showing ignores. Petitioner additionally contends that Patent Owner’s arguments are based on the erroneous premise that an ordinarily skilled artisan must be able to physically combine the references. See Pet. Reply 7 (citing In re Mouttet, 686 F.3d 1322, 1332–33 (Fed. Cir. 2012)). We disagree. Patent Owner’s arguments, summarized above, simply point out that an ordinarily skilled artisan would not have expected success in combining the references’ teachings in the way Petitioner proposes. Motivation to combine and reasonable expectation of success are properly assessed with reference to the combination as Petitioner has framed it. The Federal Circuit has explained that doing so is not inconsistent with Mouttet. See Samsung, 925 F.3d at 1382–83 (“We will not fault the Board for analyzing Petitioners’ obviousness grounds in the way presented in the Petition.”).” slip op. at 34

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Petitioner’s and Mr. Prairie’s analysis does not acknowledge, much less bridge, the gap between Koning’s use of a brush belt to hold potatoes from above as they lie on a conveying surface, versus the brush belt’s use in above.10 During his deposition, Mr. Prairie resisted agreeing that the potatoes are lying on the conveyor in Koning, testifying that he takes from Koning’s description that “they are captured within the belt with brush hairs. And that there is some weight that’s along the conveying member 23.” Ex. 2193, 96:24–99:25. Mr. Prairie testified that he “do[es]n’t believe the brush hairs support the full weight of the potatoes,” but that Koning did not provide him sufficient information to answer whether the conveying member supports the majority of the weight of the potatoes. Id. at 106:22–107:21. In our view, it is clear from Koning’s description that the potatoes lie on the conveyor and the purpose of the brush belt is to maintain their position relative to each other while they are moved by the conveyor. Ex. 1004, 3:16–24, 5:3–14, Fig. 4; see also Ex. 2205 ¶¶ 140–141 (Patent Owner’s expert, Dr. Glancey, testifying that a simple mechanical analysis shows that in Koning, about 87% of the potatoes’ weight is supported by the conveying member). Mr. Prairie’s refusal to acknowledge the differences between the brush belt’s function in Koning versus the proposed combination undermines the credibility of his testimony that the proposed combination would have been a simple application of a known technique to a known device. 10 See WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016) (noting expert testimony that supported the absence of a motivation to combine: “[I]f I can equate this one to kind of a simple analogy, if you’re trying to build a piece of furniture. What’s a typical thing? You put on a piece of wood. You take a nail, and you hit the nail with a hammer. In control terms, what Mr. Phipps is suggesting is that you put the hammer on the workbench, pick up the piece of furniture and bash the piece of furniture onto the hammer. It’s totally backwards from what I believe one of skill in the art would even attempt . . . .”). have been simple for an ordinarily skilled artisan to adapt Koning’s brush belt for use in the proposed combination, where seeds are deposited onto the brush belt from above—is further undermined by his testimony that he “can’t recall a time where I’ve seen a seed being dropped into a brush belt.” Ex. 2193, 113:5–9; see also Ex. 2263, 81:2–12 (“Q. And you never attempted to drop a seed onto a moving brush belt to see whether that would be inserted into the brush belt, correct? A. As I stated, for the purposes of this case, I did not do any physical experimentation with a moving brush belt as I didn’t feel it was necessary. The prior art discloses sufficient information.”) (objection omitted). Mr. Prairie has “had some industrial design projects where we’ve had to utilize brushes for various applications,” but he “ha[s] not used a brush belt to convey seed.” Ex. 2194, 297:6–16. Mr. Prairie testified that “prior to writing this declaration, brush belt technology was not a specific area that I study, that I was researching.” Ex. 2263, 79:6–9. Indeed, during his initial deposition in this case, the only specific example of a moving brush belt Mr. Prairie could recall seeing was Patent Owner’s ExactEmerge product. Ex. 2193, 108:6–110:10. The basis for Mr. Prairie’s opinion, that a seed would be expected to enter a moving brush belt in the proposed combination, appears to only be Koning itself. Ex. 1002 ¶¶ 79–81; Ex. 2193, 116:12–19, 118:7–23; Ex. 2263, 159:5–160:2. When asked at his deposition, Mr. Prairie did not explain any other engineering analysis he performed to make that determination. Ex. 2193, 114:23–117:12. Mr. Prairie testified that he “did not operate a brush belt for this declaration because [he] didn’t feel it was necessary to make my assessments” and he “did not do study or experimentation on a brush belt as I did not feel it was necessary.” unpersuasive because, as discussed above, Koning does not teach using a brush belt to receive and convey seeds that have been dropped onto it from above. Mr. Prairie does not account for that difference by explaining why an ordinarily skilled artisan would expect Koning’s brush belt to effectively capture and carry seeds dropped from above, as in the proposed combination.” slip op. at 26

  Patent outcomesUS 9,480,199 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,480,199
• Alaska Fuel Distributors Inc. / Afd Petroleum (Texas) Inc. et al. v. Frac Shack Inc.Other
  PTAB · Oct 15, 2020 · IPR2019-00995 · APJ Timothy J Goodson · IPR · Final written decision

  The Board granted the non-contingent motion to amend, canceling claims 2, 8, 10, 18, 19, 28–30, 32–34, 37, 38, 40–42, 45, and 47 and substituting claims 48–62, which were not shown obvious.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “minimal probative value because Patent Owner has not adequately demonstrated a nexus between the asserted objective indicia and the merits of the claimed invention. Mot. to Exclude 3–4; Reply Mot. to Exclude 1–2. This argument attacks the merits of Patent Owner’s substantive arguments on objective indicia and does not establish an evidentiary basis for excluding Mr. Van Vliet’s testimony. We agree with Patent Owner that Mr. Van Vliet’s testimony is relevant to the issue of objective indicia of nonobviousness. See Opp. Mot. to Exclude 1–2. Petitioner also argues that Mr. Van Vliet’s declaration should be excluded because it contains hearsay. Mot. to Exclude 4–6; Reply Mot. to Exclude 2. Petitioner states that it “is not moving to exclude based on the fact that the Declaration itself [is] hearsay, but rather that it contains a multitude of statements therein that are themselves hearsay, made by persons other than Van Vliet . . . .” Mot. to Exclude 5. However, as Patent Owner points out, Petitioner does not identify any specific statements in the declaration that constitute hearsay. Opp. Mot. to Exclude 4. Even after Patent Owner pointed out this lack of specificity, Petitioner’s Reply still does not clarify which specific statements in the declaration are alleged to be hearsay and instead simply repeats the assertion there are “a multitude of statements therein that are themselves hearsay.” Reply Mot. to Exclude 2.” slip op. at 11

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “however, we first consider whether Patent Owner’s Revised Motion to Amend meets the statutory and regulatory requirements of 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121. Lectrosonics, Paper 15 at 4. To satisfy those requirements, Patent Owner must demonstrate that: (1) the amendment proposes a reasonable number of substitute claims; (2) the amendment responds to a ground of unpatentability involved in the trial; (3) the amendment does not seek to enlarge the scope of the claims of the patent or introduce new subject matter; and (4) the proposed claims are supported in the original disclosure (and any earlier filed disclosure for which the benefit of filing date is sought). See 35 U.S.C. § 316(d) (2018); 37 C.F.R. § 42.121 (2018).” slip op. at 16

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “We determine that the plain language of the claim, which requires that the fuel delivery connections “compris[e]” the fuel level sensor, shows that the fuel level sensor is structurally connected to the fuel level sensor. As Petitioner agrees, this claim language requires that the fuel delivery connection includes the fuel level sensor. Tr. 34:17–20. Both the fuel delivery connections and the fuel level sensor are structures, so for one to include the other, they must be physically connected. Petitioner’s argument give effect to the word “comprising.” Because a fuel delivery connection and a fuel level sensor would be operationally connected in any system that has both items, Petitioner’s interpretation essentially reads out the word “comprising” and treats the claim phrase as if it recited “fuel delivery connections and a fuel level sensor.” Our interpretation that the fuel delivery connections must be physically connected to the fuel level sensor is more faithful to the claim’s recitation that the fuel delivery connections “compris[e]” the fuel level sensor. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (“A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.”) (quoting Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005)).” slip op. at 22

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

    “a low and high fuel level in the tanks to which the fuel delivery connection is connected.” RMTA A1. Patent Owner proposes that “low” fuel level means “empty or nearly empty” and “high” means “full or nearly full.” Id. at 5 nn.16–17 (citing Ex. 1001, 4:1–4, 6:7–12; Ex. 2002, 10). Petitioner does not contest Patent Owner’s proposed constructions or offer competing constructions for these terms. See generally Opp. RMTA; Tr. 13:17–15:14. Although Patent Owner’s argument in support of these constructions is truncated, we determine that Patent Owner’s proposals are supported by the evidence of record. The ’906 patent describes that operators can be provided with “visual representations or displays showing the fuel level in each of the tanks 12. Any visual representation or display may be used that shows at least a high level condition (tank full) and a low level condition (tank empty or nearly empty) and preferably also shows actual fuel level.” Ex. 1001, 3:66–4:4; see also id. at 6:7–10 (explaining that “[t]he control station 56 may be provided with a full readout or display for each fuel tank 12 being filled that shows the level of fuel in the fuel tank 12 including when the fuel tank 12 is near empty and near full. An alternative is to provide only fuel empty (low sensor dry) or fuel full (high sensor wet) signals.”). These descriptions equate a high fuel level with the tank being full or nearly full and a low fuel level with the tank being empty or nearly empty. Patent” slip op. at 24

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,029,906
• SZ Dji Technology Co., Ltd. / Parrot Inc. v. Drone-Control, LLCAll claims unpatentable
  PTAB · Jun 11, 2019 · IPR2018-00207 · APJ Frances L Ippolito · IPR · Final written decision

  Claims 1–15 are unpatentable: claims 1, 3–6, 8–11, and 13–15 are anticipated by Thornberg ’983; claims 2, 7, and 12 are obvious over Thornberg ’983 and Karem. The motion to amend is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner did not file a Patent Owner Response and has not otherwise disputed Petitioner’s proposed level of skill. See Tr. 77:1–6. We find, based on our review of the complete record, that the evidence of record supports a level of ordinary skill in the art consistent with Petitioner’s definition. Our findings are supported by the level of ordinary skill in the art reflected by the prior art of record and the ’116 patent. See Ex. 1001, 1:36–37 (“This invention relates generally to radio controlled toys such as airplanes and helicopters.”); Ex. 1006, 1:8–10 (“The present invention relates to the control of remotely operated vehicles, and more particularly to a variable reference for the control of a remotely operated vehicle.”), see id. at 3:41–44 (“The system provides for the referencing of vehicle commands based on an operator frame of reference so that control commands provided by the operator remain intuitive and independent of the orientation of the vehicle with respect to the operator.”). Thus, we adopt Petitioner’s proposed level of ordinary skill in the art and apply it to our discussion below.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Ex. 1006, 5:22–29. We further observe that once the disclosed pitch/roll commands (i.e., command data) are provided to the pitch axis and roll axis transformation functions, the pitch axis transformation 410 and roll axis transformation 412 use transformation equations to determine a transformed pitch stick signal (TPSS) and a transformed roll stick signal (TRSS). See Ex. 1006, 6:17–28. In other words, the flight control computer transforms received command pitch/roll data into TPSS and TRSS commands. In performing this transformation, the pitch axis transformation function 410 and the roll axis transformation function 412 also receive a transformation angle (θ) input. Id. at 5:30–32. Thornberg ’983 teaches that the transformation angle θ is determined based on the true heading of the vehicle as determined by the navigation system 36 and the desired vehicle reference and vehicle reference mode. Id. at 5:31–35. As discussed above, we find that the true heading of the vehicle as determined by navigation system 36 provides motion data generated by a sensor. Thornberg ’983 teaches that the transformations into TPSS and TRSS take into account transformation angle (θ), which Thornberg ’983 teaches is determined based on the true heading (i.e., motion data) of the vehicle and the control data (pitch/roll commands) received from control panel 200 of the remote operator control. See Ex. 1006, 4:29–33, 5:23–25, 5:36–38. Further, in the operator reference mode, the orientation of the operator/remote control upon activation of the operator mode is used as the reference axis (i.e., operator’s coordinate system). Additionally, as noted in the Petition (see Pet. 30–31), Thornberg ’983 teaches a variable operator reference mode in which the operator reference changes based on changes in the orientation of the operator control panel. Ex. 1006, 7:32–35. Based on the disclosure discussed above, we find that the pitch and roll commands received at lines 405, 415 in the operator mode teach command data in “a first coordinate system from a perspective of the remote control device” as recited in claim 1. Moreover, we find that Thornberg ’983 teaches that the received pitch/roll command data is transformed into control data in “a second coordinate system that is from a perspective of the RC aircraft.” Specifically, Thornberg ’983 teaches that the transformation equations 1 and 2 transform the pitch command and roll command based on the difference between the aircraft heading and the reference heading. See Ex. 1066, 7:9–11, 7:19–24. Further, Dr. Hansman testifies that TPSS and TRSS control data control the vehicle in the vehicle’s coordinate system, which is from the perspective of the vehicle. Ex. 1003 ¶ 411. We credit Dr. Hansman’s undisputed testimony in this regard because this testimony is consistent with the disclosure of Thornberg ’983, which teaches, among other things, that “[t]he system provides for the referencing of vehicle commands based on an operator frame of reference so that control commands provided by the operator remain intuitive and independent of the orientation of the vehicle with respect to the operator.” Ex. 1006, 3:41–44.” slip op. at 19

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

    “[a] POSITA would have been motivated to modify Thornberg’s control panel 200 to “control” the UAV 100 in a hovering state, i.e., by sending appropriate lift command data to the vehicle when the operator releases the input controls as Karem teaches, in order to facilitate aerial tasks that may involve a hovering state, such as airborne surveillance, inspection, maintenance, and repair, that Thornberg teaches were “well known” uses of UAVs. Ex. 1006, 1:15-24; Ex. 1003, ¶443. Pet. 45. We are persuaded that Petitioner’s rationale and evidence demonstrate by a preponderance of the evidence that claims 2, 7, and 12 would have been obvious in view of Thornberg ’983 and Karem. For example, Petitioner’s arguments are supported by the disclosure of Karem, which teaches a remotely-operated vehicle in a hovering state (Ex. 1008, 7:13–23, 32–39, and Thornberg ’983 teaches remotely operated vehicles include helicopters (Ex. 1006, 1:14–17). Further, Petitioner’s arguments are supported by Dr. Hansman’s undisputed testimony that a POSITA would have been motivated to modify Thornberg ’983’s control panel 200 to control UAV 100 in a hovering state, i.e., by sending appropriate lift command data to the vehicle when the operator releases the input controls as Karem teaches, in order to facilitate aerial tasks that may involve a hovering state, such as airborne surveillance, inspection, maintenance, and repair. Ex. 1003 ¶ 443. This testimony is supported by Thornberg ’983’s teaching that (1) airborne surveillance, inspection, maintenance, and repair were well known uses of UAVs; and (2) remote operation of UAVs apply to remotely operated helicopters. See Ex. 1006, 1:15–24.” slip op. at 29

  • Expert testimonyPetitioner expert creditedOther

    “In the same manner described in the ’116 patent, we find that the orientation of the control panel in Thornberg ’983 indicates the angular displacement (i.e., position data) of the vehicle relative to the operator mode reference axis because the control panel is directed toward the vehicle. Thornberg ’983’s Figure 2 discloses that the control panel is directly facing the remotely operated vehicle, which is nearly identical to placement of the remote control device and RC aircraft in Figure 5 of the ’116 patent. Ex. 1001, 3:67–4:2, Fig. 5; Ex. 1006, Fig. 2.” slip op. at 50

  Patent outcomesUS 9,079,116 unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 9,079,116
• SZ Dji Technology Co., Ltd. v. Synergy Drone LLCAll claims unpatentable
  PTAB · May 23, 2019 · IPR2018-00205 · APJ Timothy J Goodson · IPR · Final written decision

  Claims 1–18 are unpatentable, principally because Thornberg-983 anticipates or renders them obvious; the contingent motion to amend is denied for lack of written-description support.

  RulingsFinal written decision

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

    “itself to qualify as “motion data,” as Petitioner contends, or whether data indicating a change in the vehicle’s position is essential, as Patent Owner argues. On that question, we agree with Petitioner that orientation data is sufficient. The Specification describes that motion sensing module 122 generates motion data 124 based on the motion of the aircraft and that motion sensing module 122 includes one or more axes of accelerometers or gyroscopes or other devices that alone, or with further processing by processing module 126, can generate data that represents θ, φ3, and/or other motion parameters such as R, Z, etc., that can be used in transforming the command data 104 to control data 128. Ex. 1001, 4:66–5:4 (emphasis added). This disclosure supports a broad understanding of “motion data” as any data generated by the sensing module that represents a position, orientation, or motion parameter.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “For the purposes of our Decision on Institution, and based on the record at that preliminary stage, we adopted Petitioner’s proposal that an ordinarily skilled artisan at the time of the invention of the ’368 patent would have had the following education and experience: [A] Bachelor’s degree from an accredited institution in electrical engineering, mechanical engineering, aeronautical or astronautical engineering, robotics, computer science, or any other discipline covering principles of design, operation, and/or control of unmanned aerial vehicles, including remote-controlled vehicles, and would have a working knowledge of the design, development, implementation, or deployment of such technologies. Additional education could substitute for experience, and significant experience could substitute for formal education. Dec. on Inst. 9 (citing Pet. 12; Ex. 1003 ¶ 28). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. See Tr. 77:3– 6. Based on our review of the complete record, we find that the evidence supports the level of ordinary skill in the art set forth above. Thus, we adopt Petitioner’s proposed level of ordinary skill in the art and apply it in our analysis below.” slip op. at 15

  • Expert testimonyPetitioner expert creditedOther

    “Looking at the first portion of the block quote, as Dr. Hansman observes, “[m]otion sensing module 122 is not limited to any specific technology and can therefore include gyroscopes that measure changes in orientation or accelerometers used to measure change in position.” Ex. 1023 ¶ 32. The Specification’s description that the “motion sensing module 122 includes one or more axes of accelerometers or gyroscopes or other devices” indicates that some embodiments include only gyroscopes, which are devices that provide information about orientation. Ex. 1001, 4:66–67 (emphasis added). Turning to the second portion of the passage block quoted above — i.e., that motion sensing module 122 includes devices that “can generate data that represents θ, φ3, and/or other motion parameters such as R, Z, etc., that can be used in transforming the command data 104 to control data 128” (Ex. 1001, 5:1–4) — we find persuasive Dr. Hansman’s testimony that an ordinarily skilled artisan would understand this passage to signify that “the motion data generated by motion sensing module 122 can be data reflecting any one, or several, or all of the mentioned parameters.” Ex. 1023 ¶ 32. Because φ3, which represents the aircraft’s orientation, is one of the mentioned parameters, this means that motion data can reflect orientation data alone. Ex. 1001, 3:46–47, 3:30–31, 5:2. We also note that Dr. Murphy’s testimony was in accord when he testified during cross-examination that “[m]otion data could be position data, it could be orientation data, or it could be a combination of position and orientation” and that he understands his own declaration to “say[] the same thing.” Ex. 1019, 96:12–15; see also id. at 61:18–19 (“Motion could be a change in only Phi 3. Yes. That’s correct.”).” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “d. Limitation [d]: “a processing module, coupled to the motion sensing module and the receiver, that transforms the command data into control data, based on the motion data, and in accordance with a second coordinate system, wherein the second coordinate system is from a perspective of the RC aircraft” We are persuaded by Petitioner’s argument that Thornberg-983’s flight control computer 38 discloses the claimed “processing module.” See Pet. 31–33. Thornberg-983’s flight control computer 38 is coupled to navigation system 36 and communications equipment 40. Ex. 1006, 4:12– 16, Figs. 5–6. Flight control computer 38 receives roll and pitch commands from communications equipment 40 and transforms those commands into transformed pitch stick signal (TPSS) and transformed roll stick signal (TRSS). Id. at 4:44–52, 5:9–12, 5:20–23, 6:17–28. These transformations are “based on the motion data” as claimed because they use the transformation angle θ determined from the true heading measured by navigation system 36. Id. at 5:30–35, 6:22, 6:27. Thornberg-983 also discloses that the control data can be in a coordinate system that is from the aircraft’s perspective, as claimed, because in one mode of operation, “the vehicle reference for purposes of vehicle control is the forward reference position on the aircraft.” Id. at 5:56–59; Ex. 1003 ¶ 201. Patent Owner argues that Thornberg-983 does not disclose transforming command data into control data based on motion data. PO Resp. 8–13; Sur-Reply 6–8. Patent Owner agrees that in Thornberg-983, transformation uses transformation angle θ, which is determined based on the vehicle’s true heading. PO Resp. 8. But Patent Owner contends that transformation angle θ is not “motion data” because it is solely an indication of orientation. Id. (citing Ex. 2005 ¶¶ 74–75). The distinction Patent Owner urges between Thornberg-983 and the claimed subject matter is based on Patent Owner’s proposed construction of “motion data” as requiring data indicative of a change in position. See id. at 8–9; see also Tr. 103:1–8. For the reasons discussed in Section II.A., we decline to adopt Patent Owner’s proposed construction. Under the construction we have adopted, Thornberg- 983’s transformation angle θ is motion data because, as both parties agree, it indicates the vehicle’s orientation. e. Limitation [e]: “a plurality of control devices, coupled to the processing module, that control the motion of the RC aircraft based on the control data” We are persuaded by Petitioner’s argument that Thornberg-983’s pitch flight control system and roll flight control system disclose the claimed “control devices” because they are coupled to flight control computer 38 and they control the pitch and roll motion of the vehicle based on the transformed TPSS and TRSS data. See Pet. 33 (citing Ex. 1006, 6:16–28; Ex. 1003 ¶ 203). f. Conclusion Regarding Claim 1 We determine that Petitioner has proven by a preponderance of the” slip op. at 22

  Patent outcomesUS 8,380,368 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,380,368

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.