• Sony Interactive Entertainment LLC v. Quantum Imaging LLCNo claims unpatentable
  PTAB · Dec 9, 2024 · IPR2023-00996 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1–3, 5–8, 10–12, and 18 were not shown unpatentable as obvious over Pisanich or the PSO Manual because neither adequately taught the claimed QIE module.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “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 33

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 8–9 (citing Ex. 1004 ¶ 43). Patent Owner’s asserted level of ordinary skill in the art mirrors Petitioner’s except that Patent Owner contends that “a general knowledge of advertising and virtual reality . . . do not specifically apply to the ‘165 Patent.” PO Resp. 5. The ’165 patent claims and describes a “virtual thematic environment” in detail. Indeed, the ’165 patent describes in one embodiment “a method of integrating holographic images into a virtual thematic environment using a computerized system” and “that the computer system of the present invention provides product placement in a virtual thematic environment.” Id. at 3:32–33, 40–45. Although virtual reality and advertising are not claim elements in this case and do not play a specific role in our analysis below, because the ’165 patent specifically contemplates the integration of advertising and virtual environments we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’165 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 11

  • Prior constructionPrior construction adoptedNo construction neededDecided for patent owner

    “Having considered the complete record now before us, and where both parties have deferred to the District Court’s constructions, there is no actual dispute as to the meaning of any specific claim terms in this proceeding and we determine that no express additional claim construction is necessary for any particular claim term. Like the parties, for purposes of this Decision we adopt, and where appropriate refer to, the District Court’s claim constructions and also to Patent Owner’s additional interpretations of “client” and “server.” We note that neither “software layer” nor “types,” as set forth in the District Court’s construction of the QIE module is recited in the claims of the ’165 patent. To the extent necessary, we address the terms “types,” “software layer,” “client,” and “server” in our analysis below in the context of the claims and written description of the ’165 patent. See, e.g., Ex. 1001, 12:34–37 (The ’165 patent describing that “[i]n a client-server environment, at least one client and at least one server are each connected to a network such as a Local Area Network (LAN), Wide Area Network (WAN), and/or the Internet, over a communication link.”). We make another observation regarding the claimed “quantum imaging environment (QIE) module” referenced as 202/211 in Figure 2 of the ’165 patent. A QIE is discussed throughout the specification as relating to both a “QIE engine” and a “(QIE) module.” Id. at 6:6, 16:47. Apart from the broad description that QIE 202/211 is a software layer, and includes “an interpreter” which “allows developers to develop objects and applications from the interpreter,” and that the “interpreter [] will take all of the rich content, interpret the information into objects to be manipulated and accessed via any device and place these objects or information in the the software architecture of the QIE itself and how it actually handles, manipulates, or converts information or content into specific formats. Id. at 15:55–59.7 Apart from adopting the District Court’s claim constructions, we need not further expressly construe any claim terms to resolve the parties’ disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 14

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

    “In summary, we find that Pisanich discloses to a person of ordinary skill in the art a computer game system that incorporates real world data into multiple games, and even games with different themes, but not a QIE for accomplishing these tasks for different devices. Ex. 1004 ¶ 17. We find insufficient evidence by Petitioner and Mr. Crane that a person of ordinary skill in the art, considering Pisanich, would have understood that multiple games included multiple games on different devices as required by the District Court’s claim construction of a “QIE module”—that is “a software layer which receives and interprets content such that the content is manipulated so as to be accessible on different types of devices for use within the virtual thematic environment.” Ex. 1009, 4–7 (emphasis added). Independent Claim 18 Independent claim 18 recites the same limitation of “providing a quantum imaging environment (QIE) module in one of the client or the server system” as in claim 1[b]. Consequently, our analysis of the corresponding limitations of claim 1[b] applies also to claim 18. For the reasons given for claim 1, we find that Petitioner has failed to show by a preponderance of the evidence that claim 18 would have been obvious over Pisanich.” slip op. at 36

  Patent outcomesUS 10,991,165 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,991,165
• 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
• Nespresso USA, Inc. v. K-Fee System GMHBNo claims unpatentable
  PTAB · Apr 10, 2024 · IPR2022-01574 · APJ James J Mayberry · IPR · Final written decision

  Claims 1–13 were not shown unpatentable because the asserted combinations did not teach or render obvious the claimed groove entirely to the side of the chamfered mandrel.

  RulingsFinal written decision

  • Skill levelSkill level board ownPatent owner expert discountedDecided for patent owner

    “The Federal Circuit has made clear that, “[t]o offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art.” Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022) (emphasis added). “Without that skill, the witness’[s] opinions are neither relevant nor reliable.” Id. at 1377. The Federal Circuit reasons that “‘[a]dmitting 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)). possesses at least the level of ordinary skill in the art. Our level of ordinary skill in the art requires a bachelor’s degree in engineering plus five years of experience in design of mechanical beverage systems, or similar products, as well as experience with sensors for recognizing an identifier. Patent Owner does not persuasively account for how Dr. Howle’s experience, extensive as it may be, includes five years of experience in design of mechanical beverage systems, or similar products, as well as experience with sensors for recognizing an identifier. Cf. Kyocera, 22 F.4th at 1376 (“Dr. Pratt has advanced degrees in engineering and extensive experience in the design and manufacture of fastener driving tools. But he lacks experience in power nailer design.”).” slip op. at 21

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “The Federal Circuit has made clear that, “[t]o offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art.” Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022) (emphasis added). “Without that skill, the witness’[s] opinions are neither relevant nor reliable.” Id. at 1377. The Federal Circuit reasons that “‘[a]dmitting 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)). possesses at least the level of ordinary skill in the art. Our level of ordinary skill in the art requires a bachelor’s degree in engineering plus five years of experience in design of mechanical beverage systems, or similar products, as well as experience with sensors for recognizing an identifier. Patent Owner does not persuasively account for how Dr. Howle’s experience, extensive as it may be, includes five years of experience in design of mechanical beverage systems, or similar products, as well as experience with sensors for recognizing an identifier. Cf. Kyocera, 22 F.4th at 1376 (“Dr. Pratt has advanced degrees in engineering and extensive experience in the design and manufacture of fastener driving tools. But he lacks experience in power nailer design.”).” slip op. at 21

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

    “Based on the information above, we conclude that the limitation “a groove that is laterally offset from the chamfered mandrel” requires the groove to be entirely to the side of any part of the mandrel. This construction is consistent with the words of the claim—the claim states that the groove is laterally offset from, or to the side of, the chamfered mandrel, not merely offset from a portion of or the centerline of the mandrel. This construction is also consistent with the one embodiment describing the relationship between the mandrel and groove containing the seal, which depicts the groove entirely to the side of the chamfered mandrel. We do not accept Mr. Jobin’s testimony that laterally offset is determined relative to the centerline of an object. Neither the intrinsic record nor other extrinsic evidence provides support for Mr. Jobin identifying the centerline of an object as the reference point for determining if a point is laterally offset from the object.” slip op. at 31

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

    “We do not agree with Petitioner that Yoakim teaches a groove that is laterally offset from the chamfered mandrel. As we indicated in our claim construction section, we construe the claim term to require the groove to be entirely to the side of any part of the mandrel. We agree with Patent Owner that, as depicted in Yoakim’s Figure 35, the alleged groove is not entirely to the side of any part of the mandrel. See Pet. 69; see also Pet. Reply 19 (showing the alleged groove, in red, including a portion over the chamfered mandrel); PO Resp. 55 (same). Even if Petitioner’s position is that all of the groove must be to the side of the centerline of the mandrel, Petitioner fails to prove that Yoakim teaches such a structure. As seen in Petitioner’s illustration at page 19 of Petitioner’s Reply (reproduced above), a small portion of the groove (which Petition colorizes in red) is to the left of the centerline (shown in green). See Pet. Reply 19.” slip op. at 40

  Patent outcomesUS 11,254,491 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,254,491
• Equipmentshare.Com Inc. v. Ahern Rentals, Inc.No claims unpatentable
  PTAB · Nov 10, 2022 · IPR2021-00834 · APJ James J Mayberry · IPR · Final written decision

  Claims 1–3, 7–13, and 17–20 were not proven unpatentable because the cited combinations did not establish the required all-user lockout or remote starting limitations.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We agree with Patent Owner that expert testimony that closely mirrors the language in a petition, without more, may provide little help to the Board as fact finder, because the expert fails to fill his or her role to help us “understand the evidence or [] determine a fact in issue.” See Fed. R. Evid. 702(a). Often, we are left with conclusory testimony with little or no supporting evidence. This type of testimony, however, is not necessarily deficient or entitled to no weight. As Petitioner notes, it may be the case that the expert’s testimony serves as the basis for language in a petition, and may include non-conclusory opinions. As such, we evaluate the specific testimony of an expert to determine the amount of weight attributable to that testimony, based on the support provided for the testimony. So, some testimony may be entitled to greater weight than other testimony, based on the supporting evidence in the record.” slip op. at 18

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “or a similar technical field, with at least three years of relevant product design experience, including design of remote control or remote monitoring systems, where an increase in experience could compensate for less education. Pet. 15 (citing Ex. 1006 ¶ 44). Patent Owner states that it does not necessarily agree that three years of design experience including remote control or remote monitoring systems is a requirement to be a person of ordinary skill in the art but argues that the distinction is not determinative of the issues raised in the Petition. PO Resp. 6. We adopt Petitioner’s proposed definition, basing our decision on our review of the ’330 patent, the prior art of record, and Mr. Wilson’s testimony. See Ex. 1006 ¶ 44. We agree with Patent Owner, however, that the level of experience is not determinative of the dispositive issues in this proceeding.” slip op. at 21

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

    “(“[T]he context in which a term is used in the [claim at issue] can be highly instructive.”). Claim 1 recites, in relevant part, the step of “locking out operation of the machine if the processor detects that the access code was disabled upon completion of the authorized operation of the machine.” Ex. 1001, 6:28–30. The words of this step make clear that what is locked out is operation of the machine, rather than access and operation as Petitioner proposes. The words of the claim also make clear that this locking out takes place after completion of the authorized operation and disabling of the access code. Also, this step is distinct from the step of “denying authorized operation of the machine if the entered access code does not match the authorization code” recited earlier in claim 1. See id. at 6:26–27. As such, “locking out” means more than just denying operation of the machine to any one user that has entered an invalid access code. “[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’” Phillips, 415 F.3d at 1315. The Specification discusses locking out in the context of a Lockout Flag, which is part of the logical sequence of steps illustrated in Figure 4. See Ex. 1001, 2:41–44, 5:3–36. Specifically, the Specification describes that the software checks whether a Lockout Flag in frame 67 was set by an administrator at the construction machine 56, or by an administrator at the remote host computer 45. If the Lockout Flag is set, then the algorithm transits to a Lockout Mode in the frame 68, where all users are locked out and are no longer permitted to access and operate construction machine 56 until the Lockout Flag in frame 67 has been cleared by the administrator. Id. at 5:29–36. In this sole example, “locking out” prevents all users from operating the machine.” slip op. at 22

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

    “As an initial matter, we agree that neither Shibata nor Kaman discloses locking out all users if the processor detects that the access code was disabled upon completion of the authorized operation of the machine as required by claim 1. As Petitioner recognizes, Shibata simply denies authorization to the user with that access code. See Pet. 25; see also Ex. 1007 ¶ 125 (“[M]ain control unit 11 determines that unmatch between [PINs] in Step S63 is due to the fact that a person not authorized to use the hydraulic excavator has made an attempt to start the engine 14. Then the main control unit 11 inhibits start of the engine 14 (Step S68) . . . .”). Kaman is directed at verifying an indicium of identity to determine if a specific user is an authorized user. See, e.g., Ex. 1008, code 57, 7:7–60 (describing processes for authorizing a user). We recognize that Kaman uses the term “lock-out command.” See Ex. 1008, 7:59. This term is used, however, with respect to a single user, not all users. As Kaman describes, when a magnetic card or access code (exemplary indicia of identity) is identified as lost or stolen, then central computer 38 may either not respond to an access request using the lost or stolen indicium, or respond to the access request with a lock-out command. Id. at 7:52–60. That is, when access is controlled by a remote, central computer, that computer can lock out a specific user who attempts access with lost or stolen indicia of identity. We discern nothing in this disclosure, nor does Petitioner persuasively explain, that Kaman’s use of the term “lockout” would lock out all users, as required by Petitioner’s construction. See PO Resp. 12–13 (“[I]t does not make sense that Kaman would lock out all users following the loss or theft of a single magnetic card or keypad access code; no, at most only that specific card or code would be ‘locked out’ while others remained active.”). Similarly, when access is controlled locally with Kaman’s system, the central computer periodically checks the list of users from vehicle access controller 10. “Where an unauthorized access is determined (i.e., the vehicle was activated outside of normal working hours) or a card was lost, stolen, or expired, the central computer may download a new set of files identifying authorized users (thereby denying access to unauthorized users using indicia of identity of authorized users).” Ex. 1008, 7:45–51. In this case, authorized users may still access the machine. As such, to the extent that Petitioner argues that Kaman teaches locking out all users, we find, on review of the complete record, that Petitioner fails to prove, by a preponderance of the evidence, that all users are locked out by Kaman’s “lock-out” command. To the extent that Petitioner argues that a person having ordinary skill in the art would have had reason to modify the combined teachings of Shibata and Kaman to lock-out all users, we analyze Petitioner’s reasons for modifying Shibata with Kaman. See, e.g., Ex. 1006 ¶ 68 (testifying that a person having ordinary skill in the art could have, “perhaps simply remove[d] all access codes from the machine”). We have weighed the evidence in the complete record, as informed by the parties’ arguments, and find that Petitioner has not demonstrated, by a preponderance of the evidence, that a person having ordinary skill in the art would have had reason to modify Shibata with Kaman to lock out all users. The primary reason that Petitioner provides for the proposed modification is “when . . . the location or type of machine 10 has a high risk of theft.” Pet. 26. We agree with Patent Owner, however, that Shibata’s system of restricting access to a user with a cell phone containing specialized software to access the machine ameliorates any risk of theft from an unauthorized user. See PO Resp. 14. As Shibata discloses, its security system “prevents possible theft of a construction machine.” Ex. 1007, code 57. Shibata explains that its invention overcomes the deficiencies of security systems that address the problem of “frequent theft of a construction machine.” Id. ¶¶ 2–11. Indeed, as Petitioner recognizes, a person having ordinary skill in the art would have understood from Shibata’s teaching that an “unauthorized operator nevertheless had a cell phone compatible with Shibata’s system because it communicated with, and sent its PIN to, the control unit 11.” Pet. 25. As such, “the (unauthorized) operator either was attempting access before their reserved date/time, or was previously authorized to use the vehicle but their reservation period had ended such that the authorized PIN stored in server 41 (if any) identified a different operator.” Id. In other words, Shibata’s unauthorized users were those who were otherwise authorized but attempting to operate the machine outside their authorized time. Even if a skilled artisan were concerned with preventing theft, Petitioner has not shown the claimed approach (locking out all users) was taught by the prior art. And in light of the prior art’s deficiency, Petitioner has not adequately justified modifying the prior art’s approach to include locking out all users.” slip op. at 32

  Patent outcomesUS 9,193,330 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,193,330
• Platform Science, Inc. v. Omnitracs, LLCNo claims unpatentable
  PTAB · Aug 29, 2022 · IPR2020-01612 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–4, 6–9, 11, 12, and 15 were not shown unpatentable because Coffee did not disclose the claimed copying, and Coffee combined with Heijden did not cure that deficiency.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “In our Initial and Rehearing Decisions, we noted that Patent Owner did not contest Petitioner’s proffered level of ordinary skill in the art at that stage of the proceeding and we found “Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the ’308 patent and the prior art of record.” Initial Dec. 13 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978)); Rehearing Dec. 16 (same). Therefore, we adopted Petitioner’s unopposed position as to the level of ordinary skill in the art. Initial Dec. 13; Rehearing Dec. 16. In its Patent Owner Response, Patent Owner states that “[f]or purposes of this proceeding, Patent Owner does not dispute Petitioner’s offered level of ordinary skill in the art.” PO Resp. 7. Accordingly, we maintain our preliminary finding by adopting Petitioner’s proposed level of ordinary skill in the art, as set forth above.” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “received message 7102 and the header of the response message 7202 are not the same. PO Resp. 25 (citations omitted); Pet. Reply 14. In the Petition, Petitioner argued that “header information” was the same in each message (received and response). Pet. 32 (citations omitted), 36–37. Petitioner relies on Tables 58 and 63, which show “Header.” Id. at 32–33, 37. Petitioner also relies on paragraphs 102 and 118 of Mr. Andrews’s Declaration. Neither the Petition nor Mr. Andrews’s Declaration, however, provide any sufficient basis to find that even a portion of the header or header information is copied from the received message to the response message. Mr. Andrews states his opinion as though it were fact without providing the underlying factual support for his opinion. See Ex. 1003 ¶¶ 102, 118; 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.”). In cross-examination, Mr. Andrews provided additional information explaining which portion of the headers he believes are the same, but he still does not provide any explanation as to why he believes the information is copied. See, e.g., Ex. 2007 at 111:3–25. The same is true of Petitioner’s Reply, which reiterates Mr. Andrews’s deposition testimony, but still fails to provide any reason as to why Coffee’s charts or Mr. Andrews’ testimony necessarily means that Coffee copies a portion of the header from the received message to the response message. See Continental Can Co. U.S.A., Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (“Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”). And, despite Petitioner’s identification of a “Header” listed in Tables 58 and 63, Coffee does not expressly describe the header or part of the header as being copied from the received message to the response message. The Petition and Mr. Andrews also state that “if Coffee did not employ such copying, the response message would not automatically include information extracted from the received message.” Pet. 38 (citing Ex. 1003 ¶ 118). But, Coffee does not expressly describe the header as being “extracted from the received message” or describe automatically including the header in a response message to make the leap argued by Petitioner and Mr. Andrews. Accordingly, on the full record before us, we find that Petitioner has not established that Coffee explicitly or inherently discloses copying the header or header information and we do not credit Mr. Andrews’ testimony, discussed above, because he fails to provide the underlying factual basis for the opinions offered.” slip op. at 43

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

    “proceeding and on the full record before us, we do not find that Coffee’s silence is sufficient to support Petitioner’s argument. See Campbell Soup Co. v. Gamon Plus, Inc., 787 Fed. Appx. 731, 739 (Fed. Cir. 2019) (“We do not find any error in the Board changing its understanding of the teachings of [a prior art reference] from the institution decision to the final written decision. ‘The Board is not bound by any findings made in its Institution Decision. At that point, the Board is considering the matter preliminarily without the benefit of a full record. The Board is free to change its view of the merits after further development of the record, and should do so if convinced that its inclinations were wrong.’” (quoting Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016))). Coffee does not explain the process by which the IOD of the received message is included in the response message; rather, Coffee just states that the response message “contains the IOD of the message being answered.” See, e.g., Ex. 1005, 56:63–67 (see full text quoted above). In particular, although Coffee attributes certain actions to the operator, the lack of attribution to the operator does not necessitate that the only viable possibility remaining is that Coffee copies the IOD from the received message to the response message. Even if it may be said that Coffee probably (or possibly) copies the IOD, that probability is not sufficient to find that Coffee necessarily copies the IOD. See Continental Can, 948 F.2d at 1269 (“Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”).7 Additionally, on the full record before us, we determine that Mr. Andrews’s testimony, as with his testimony as to copying of the header and selected response, fails to provide any factual or underlying support for his opinions expressed therein. See Ex. 1003 ¶¶ 100–102. In particular, the leap occurs in paragraph 102, where Mr. Andrews takes the fact that some information (at least the IOD) from the received formatted message is included with the response message to opine that this means the information is “copied over.” Id. ¶ 102. But, again, Coffee is silent. And because Mr. Andrews did not provide any underlying factual basis for his opinion, we do not credit his testimony as to copying the IOD. 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 48

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

    “generally, including the alleged benefits of such and reasons why one of ordinary skill in the art would have been prompted to include field-mapping information in Coffee’s MDT. See id. at 62–70. None of Petitioner’s discussion, however, explains how the combination of Coffee and Heijden remedies the deficiencies that we identified regarding Petitioner’s challenge based on Coffee. In particular, Petitioner does not assert or explain how the teachings of Heijden would be applied to Coffee such that Coffee would then copy or fill in the specific information from Coffee’s received message to Coffee’s response message, particularly as pertains to the header, Response, and IOD fields (which Petitioner relied on in the first ground), or any other information field from Coffee. The same is true of Mr. Andrews’s testimony. See Ex. 1003 ¶¶ 214–231. Additionally, it appears that Petitioner’s analysis of the combination of Heijden and Coffee maintains the position that Coffee copies information fields. See Pet. 70 (“Given that Coffee’s system already implements field mapping to copy information fields . . . .”). And, Mr. Andrews’s testimony similarly maintains that Coffee copies information fields. See Ex. 1003 ¶ 229 (“Coffee also discloses (at least inherently) field mapping by describing that data is copied from fields in request messages into corresponding fields in response message.”). But, as we explain in detail in the context of Petitioner’s challenge based on Coffee, Petitioner has not shown sufficiently that Coffee copies or fills in information from a received message to a response message. Thus, we do not find and Petitioner does not allege that Ground “1B” fills the gaps identified in Petitioner’s Ground “1A.”10 Accordingly, we determine that Petitioner has not established, by a preponderance of the evidence, that the combination of Coffee and Heijden would have rendered the subject matter of claims 1–4, 7–9, and 12 unpatentable.” slip op. at 60

  Patent outcomesUS 6,925,308 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,925,308
• Medtronic Corevalve LLC / Medtronic, Inc. v. Speyside Medical, LLCNo claims unpatentable
  PTAB · Aug 12, 2022 · IPR2021-00239 · APJ Patrick R Scanlon · IPR · Final written decision

  The Board held that claims 1, 2, 5, 7–11, 13, 14, and 18–23 were not shown unpatentable because the combinations did not establish the claimed carrier-length limitation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner submits that a person having ordinary skill in the art “would have had a minimum of either a medical degree and experience working as an interventional cardiologist or a Bachelor’s degree in bioengineering or mechanical engineering (or a related field) and approximately two years of professional experience in the field of prosthetic cardiovascular implants,” and “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Pet. 21–22 (citing Ex. 1002 ¶¶ 31–34). We adopted Petitioner’s proposed level of ordinary skill in the art in the Decision on Institution, stating it was “consistent with the evidence of record, including the asserted prior art.” Dec. Inst. 9–10. In its Response, Patent Owner notes that it and its expert, Dr. Vesely, apply Petitioner’s level of ordinary skill in the art for the purposes of this proceeding. PO Resp. 20. Based on our review of the record before us, we continue to apply the level of ordinary skill in the art adopted in the Decision on Institution.” slip op. at 10

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

    “Beyond addressing this new argument, we determine that we need not expressly construe any other claim term to resolve the parties’ disputes because doing so would have no effect on the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); see also 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 13

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

    “Instead, we agree with Patent Owner that Leonhardt’s cylindrical end portions change in shape and length, at least to some degree, when stent 26 is expanded or collapsed. See PO Resp. 26–28. We also credit Dr. Vesely’s uncontroverted and well-reasoned testimony on this point. See Ex. 2004 ¶¶ 83–85. Furthermore, we agree that the Petition and Dr. Drasler rely 8 Patent Owner actually cites to Exhibit 2013, but this is an apparent typographical error because the quoted language appears in lines 20–22 on page 195 of Exhibit 2027. We note that the quoted testimony reiterates Dr. Drasler’s other testimony that “[t]he length of the Leonhardt device would be the length of the connecting bar plus the length of the stent components at each end of the connecting bar.” Ex. 2027, 195:11–14. solely on connecting bar 29 holding the cylindrical end portions a predetermined distance apart to support the assertion that the stent’s length is substantially equal in each configuration. See Pet. 46–47; Ex. 1002 ¶¶ 134– 137. As such, Petitioner has failed to explain the effect that the changes in Leonhardt’s cylindrical end portions have on the overall length of stent 26. Accordingly, we are not persuaded that Petitioner has met its burden of showing, by a preponderance of the evidence, that Leonhardt discloses “a length of the carrier element in the moveable configuration being substantially equal to or less than a length of the carrier element in the first expanded configuration.”” slip op. at 22

  • Obviousness (§103) › Objective indicia / secondary considerationsNot reached

    “In view of the above, we are not persuaded on the complete record before us that Petitioner has met its burden of showing, by a preponderance of the evidence, that independent claim 1 is unpatentable over the combination of Leonhardt and Gabbay. Because we are not persuaded Petitioner has demonstrated sufficiently that the combination of Leonhardt and Gabbay renders claim 1 obvious, we need not reach Patent Owner’s assertions regarding objective indicia of nonobviousness.” slip op. at 24

  Patent outcomesUS 8,377,118 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,377,118
• SHDS, Inc. / Galderma Laboratories, L.P. v. Truinject Corp.No claims unpatentable
  PTAB · Nov 15, 2021 · IPR2020-00937 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 1, 3, 4, 6–16, and 20–26 were not shown unpatentable because the petition did not account for required simulated therapeutic-agent delivery and real-time digital-plunger limitations.

  RulingsFinal written decision

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

    “In light of the parties’ mutually acknowledged agreement of the meaning of the noted-term, and given that we do not see reason on the record before us to deviate from that meaning, we apply the same meaning of “a simulated flow of therapeutic agent delivered from the digital model of the syringe to the digital model of the training apparatus” to the noted claim phrase and consider no further construction to be necessary. 3. Remaining Claim Terms We discern that no other term needs an express construction to resolve the parties’ dispute. See Nidec, 868 F.3d at 1017.” slip op. at 9

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

    “Thus, Patent Owner proposes a construction of the above-noted phrase as “a simulated flow of therapeutic agent delivered from the digital model of the syringe to the digital model of the training apparatus.” Petitioner acknowledges that “the parties agreed to the construction of this term in the Delaware Action. No further construction of the term is required.” Pet. Reply 5. In light of the parties’ mutually acknowledged agreement of the meaning of the noted-term, and given that we do not see reason on the record before us to deviate from that meaning, we apply the same meaning of “a simulated flow of therapeutic agent delivered from the digital model of the syringe to the digital model of the training apparatus” to the noted claim phrase and consider no further construction to be necessary.” slip op. at 9

  • Strike new argumentNew argument disregardedDecided for patent owner

    “on Lampotang’s paragraph 89, Petitioner attempts to expand its proposed ground, and uses the Petitioner Reply to do so. To that end, Petitioner turns to specific disclosure of Samosky at paragraph 67 as providing an evidentiary basis to conclude that depiction of a simulated delivery of a therapeutic agent “would have been obvious.” Pet. Reply 14. A reply provides an opportunity for a party to respond to arguments made, for instance, in a patent owner response. 37 C.F.R. § 42.23(b). A reply, however, is not an appropriate vehicle to reconfigure a proposed ground based on new or additional evidence that is not reasonably tied to a ground advanced in the Petition, which is what Petitioner seeks to do here. The Petition does not set forth an adequate basis to conclude that Petitioner relied on Samosky’s teachings to account for features of claim 1 of the ’232 patent. As Patent Owner points out (PO Sur-reply 13–14), it is impermissible and untimely for Petitioner to now attempt to do so as a part of the Reply. See, e.g., Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1330–31 (Fed. Cir. 2019) (“[A]n [inter partes review] petitioner may not raise in reply ‘an entirely new rationale’ for why a claim would have been obvious.”) (citing Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1370 (Fed. Cir. 2016)).” slip op. at 21

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Lampotang’s disclosure with reference to Figure 2 focuses on the CVL technique, which involves withdrawing blood from a blood vessel rather than injecting medication into the patient’s body. Ex. 1008 ¶¶ 89-90. The CVL technique is not concerned with visualizing a simulated flow of therapeutic agent delivered from a digital model of the syringe to the digital model of the training apparatus. Ex. 2005 ¶ 102; see PO Resp. 41. We credit Dr. Pugh’s testimony on this matter, as we find it consistent with Lampotang’s disclosure as to the content of its Figure 2 and Lampotang’s description of the CVL technique. See, e.g., Ex. 1008 ¶¶ 78, 89–90.” slip op. at 20

  Patent outcomesUS 10,290,232 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 10,290,232
• One World Technologies, Inc., D/B/A Techtronic Industries Power Equipment v. Chervon (HK) LimitedNo claims unpatentable
  PTAB · Nov 3, 2021 · IPR2020-00888 · APJ Alyssa A Finamore · IPR · Final written decision

  Claims 1–12, 15–17, and 19–21 were not shown unpatentable because the asserted §103 combinations lacked persuasive support for the claimed safety control devices.

  RulingsFinal written decision

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

    “lawnmower and Nakano’s control device that disables the motor when the telescoping tubes are partially collapsed is premised on the safety issue of a user getting too close to the blade path when the user rotates Reichart’s handle between the in-use and storage positions. Even if we agree with Petitioner that this safety issue exists, it is the rotation, not the telescoping, of the handle that causes a user to get too close to the blade path. Reichart discloses the shortest length of the handle in the in-use position maintains minimum spacing “a” with respect to blade circular path 8. Ex. 1007, 4:31–5:5, 6:1–5. Although reducing minimum spacing “a” could bring a user and the operating elements on the handle too close to the blade path, such a reduction is effected by rotating telescopic tube 3 over casing 1, not sliding upper part 3b of telescopic tube 3 relative to lower part 3a. Moreover, as shown in Petitioner’s annotated version of Reichart’s Figure 4, telescoping the handle to a different length would not cause a user to stand in a different position other than the unsafe position shown with the red footprints to rotate the handle between the in-use and storage positions. Given that rotation, not telescoping, of Reichart’s handle brings a user and the operating elements too close to the blade path, we agree with Patent Owner that modifying Reichart’s lawnmower to include Nakano’s control device that activates and deactivates the motor based on the sliding position of the telescopic tubes would not have ensured that the operating elements and the user are a safe distance from the blade path. Petitioner’s rationale for adding Nakano’s control device to Reichart’s lawnmower lacks rational underpinning. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006))).” slip op. at 38

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

    “18 We do not understand Petitioner to be arguing that it would have been obvious to combine hold-to-run control component 30 and the electrical supply contactor associated therewith from Outils’s embodiment shown in Figure 1 with activation actuator 23 and cam 24 of Outils’s embodiment shown in Figure 10. A petitioner must explain why a POSITA would have combined the elements, including those disclosed in separate embodiments described in a single reference. See KSR Int’l Co., 550 U.S. at 418 (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”); In re Stepan Co., 868 F.3d 1342, 1345–46 n.1 (Fed. Cir. 2017) (“Whether a rejection is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful . . . .”). Petitioner does not provide any such explanation, reinforcing our understanding that Petitioner relies on the position that a POSITA would have understood the embodiment of Figure 10 to include, without modification, hold-to-run control component 30 controlling the electrical supply contactor from Figure 1. electrical supply contactor. Ex. 1014, 8:22–9:13.19 Similarly, Petitioner does not direct us to, nor do we discern, any depiction associated with Outils’s Figure 10 of a hold-to-run control component connected to an electrical supply contactor.” slip op. at 44

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerGranted

    “v. Capella Photonics, Inc., our jurisdiction to consider a petition does not require a “correct” identification of all RPIs in a petition. IPR2015-00739, Paper 38, 6 (PTAB Mar. 4, 2016) (precedential); see also Blue Coat Sys., Inc. v. Finjan, Inc., IPR2016-01444, Paper 11, 10 (PTAB July 18, 2017) (“Evidence [of failure to identify all RPIs] is, at best, suggestive of an issue that is not jurisdictional.”). The Federal Circuit agrees that § 312(a)(2) is not jurisdictional. See Mayne Pharma Int’l Pty. Ltd. v. Merck Sharp & Dohme Corp., 927 F.3d 1232, 1240 (Fed. Cir. 2019) (“[I]f a petition fails to identify all real parties in interest under § 312(a)(2), the Director can, and does, allow the petitioner to add a real party in interest.” (quoting Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364, 1374 n.9 (Fed. Cir. 2018) (en banc))). Accordingly, a petitioner may amend its mandatory notices to add a RPI and still maintain its original filing date. See, e.g., Adello Biologics LLC v. Amgen Inc., PGR2019-00001, Paper 11, 5 (PTAB Feb. 14, 2019) (precedential) (authorizing pre-institution update to Mandatory Notices to add a RPI); Proppant Express Investments, LLC v. Oren Techs., LLC, IPR2017-01917, Paper 86, 7 (PTAB Feb. 13, 2019) (precedential) (“The Board may, under 35 U.S.C. § 312(a), accept updated mandatory notices as long as the petition would not have been time-barred under 35 U.S.C. § 315(b) if it had included the real party in interest.”). In determining whether to permit a petitioner to amend its mandatory notices to add a RPI while maintaining the original filing date, we consider “whether there have been (1) attempts to circumvent the § 315(b) bar or estoppel rules, (2) bad faith by the petitioner, (3) prejudice to the patent owner caused by the delay, or (4) gamesmanship by the petitioner.” Proppant, IPR2017-01917, Paper 86 at 6–7.” slip op. at 59

  • ExcludeGranted

    “The moving party has the burden of proof in showing it is entitled to the requested relief. 37 C.F.R. § 42.20(c). The standard for granting a motion to seal is “good cause.” 37 C.F.R. § 42.54. “The ‘good cause’ standard for granting a motion to seal reflects the strong public policy for making all information in an inter partes review open to the public.” Argentum Pharm. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 at 3 (PTAB Jan. 19, 2018) (informative).” slip op. at 64

  Patent outcomesUS 10,070,588 not shown unpatentable
  § 103 obviousnesscites KSR
  Patents in suitUS 10,070,588
• One World Technologies, Inc., D/B/A Techtronic Industries Power Equipment v. Chervon (HK) LimitedNo claims unpatentable
  PTAB · Nov 3, 2021 · IPR2020-00887 · APJ Alyssa A Finamore · IPR · Final written decision

  Claims 1–20 were not shown unpatentable because the cited combinations failed to establish the claimed control devices and a reason to combine the teachings.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedOther

    “As set forth in our Trial Practice Guide12, there is no requirement of a perfect match between a declarant’s experience and the relevant field. CTPG 34 (citing SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010)). We generally permit testimony where the declarant’s scientific, technical, or other specialized knowledge will help the Board understand the evidence or determine a fact in issue. Id. (citing Fed. R. Evid. 702(a)). Mr. Smith has a Bachelor of Science degree in Mechanical Engineering and is a Certified Safety Professional in comprehensive practice. Ex. 2027 ¶¶ 3, 5. Mr. Smith is President of Alpine Engineering & Design, Inc., and has over thirty years of experience with mechanical design, including the design of lawnmower controls. Id. ¶ 6. Given his education in mechanical engineering and his experience with mechanical design, we find Mr. Smith’s testimony may be helpful in deciding factual issues in this proceeding. Moreover, when assigning weight to a declarant’s testimony, we consider the underlying facts or data upon which the testimony is based. CTPG 40–41. In our analysis of the asserted grounds of unpatentability, we weigh Mr. Smith’s testimony accordingly.” slip op. at 26

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner contends a POSITA “would have had at least a bachelor’s degree in mechanical engineering, electrical engineering, or similar technical field, with at least three years of relevant product design experience.” Pet. 12–13. Petitioner further contends “[a]n increase in experience could compensate for less education.” Id. at 13 (citing Ex. 1003 ¶ 46). Patent Owner adopts Petitioner’s proposed level of ordinary skill in the art exclusively for this proceeding. PO Resp. 5. We find Petitioner’s proposal is consistent with the level of ordinary skill reflected in the asserted references, which involve various mechanical and electrical aspects of gardening tools such as lawnmowers. For instance, Reichart discloses a lawnmower having a handle that is adjustable to different heights to accommodate users of varying heights (Ex. 1007, code (57)), and Outils teaches a lawnmower having a safety device that prevents access to the rotating cutting blade (Ex. 1014, code (57)). Accordingly, we adopt Petitioner’s proffered level of ordinary skill in the art.” slip op. at 27

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

    “Petitioner proposes constructions for three claim terms—“power supply circuit” and the related terms “locks” and “unlocks.” Pet. 14–17; Reply 5. Patent Owner “believes that no construction is required for [‘power supply circuit’] because the construction of this term is not relevant to the issues raised herein.” PO Resp. 11; see also Sur-reply 2 (arguing the construction of “power supply circuit” is not relevant to the issues raised in this proceeding). Moreover, for purposes of this proceeding only, Patent Owner does not dispute Petitioner’s proposed constructions for “locks” and “unlocks.” PO Resp. 11. The parties do not dispute the meanings of the claims terms “locks” and “unlocks,” and we agree with Patent Owner that an express construction of the claim term “power supply circuit” is unnecessary to resolve the dispute. For the reasons set forth in our analysis of the asserted grounds of unpatentability, we determine that no claim term requires an express construction for us to ascertain whether Petitioner has shown the challenged claims to be unpatentable.” slip op. at 28

  • BurdenFwd all claims patentableNot shown unpatentable

    “demonstrated Outils teaches or suggests a second control device that unlocks and locks the first control device, as recited in limitation [1f]. Also, as we explain in section III.D.1.b, Petitioner has not persuaded us that a POSITA would have combined the teachings of Reichart and Nakano to result in the claimed subject matter, including limitation [1g]. Petitioner has not proven, by a preponderance of the evidence, that the subject matter of independent claim 1 would have been obvious over Reichart, Nakano, Outils, and 16 CFR 1205. 2. Independent Claim 11 Like independent claim 1, independent claim 11 recites, in pertinent” slip op. at 51

  Patent outcomesUS 9,986,686 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 9,986,686
• One World Technologies, Inc., D/B/A/ Techtronic Industries Power Equipment v. Chervon (HK) LimitedNo claims unpatentable
  PTAB · Nov 3, 2021 · IPR2020-00884 · APJ James J Mayberry · IPR · Final written decision

  Claims 1–13 were not shown unpatentable under four § 103 grounds because the petitioner failed to establish the claimed control system in Outils.

  RulingsFinal written decision

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

    “evidence, and the parties’ arguments and counterarguments, we find that Petitioner fails to demonstrate, by a preponderance of the evidence, that Outils teaches or suggests the subject matter of the control system limitation, including both a first control device and a second control device. We find Petitioner fails to support its position that a person having ordinary skill in the art would have understood that the embodiment depicted in Outils’s Figure 10 includes a hold-to-run control connected to an electrical supply contactor with persuasive evidence. At the outset, we agree with Patent Owner that Petitioner does not argue that it would have been obvious to combine Outils’s disclosure of hold-to-run control component 30 controlling an electrical supply contactor from the embodiment of Figure 1 with the embodiment of Figure 10. That is, we understand that Petitioner contends that a person having ordinary skill in the art would have understood that the embodiment of Outils’s Figure 10 already had a specific type of control device—the hold-to-run control component 30 controlling an electrical supply contactor from the embodiment of Figure 1. See Pet. 36 (indicating that the first control device is Outils’s electrical supply contactor); Reply 7 (“But while the Bowden cable of Figure 1 is replaced in Figure 10, [a person having ordinary skill in the art] would understand Figure 10 must still include a user’s on/off component even though none is illustrated.”); see also Reply 9 (“Thus, [a person having ordinary skill in the art] would have understood Outils’ Figure 10 to include hold-to-run lever 30 . . . and its electric supply contactor from Figure 1”).15” slip op. at 31

  • PTAB / AIA Trials › Real party in interest / privityJoinder, grantedGranted

    “allow the petitioner to add a real party in interest.” (quoting Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364, 1374 n.9 (Fed. Cir. 2018) (en banc)). As such, a petitioner may amend its mandatory notices to add a real party-ininterest and still maintain its original filing date. See, e.g., Adello Biologics LLC v. Amgen Inc., PGR2019-00001, Paper 11, 5 (PTAB Feb. 14, 2019) (precedential) (authorizing pre-institution update to Mandatory Notices to add a RPI); Proppant Express Investments, LLC v. Oren Techs., LLC, IPR2017-01917, Paper 86, 7 (PTAB Feb. 13, 2019) (precedential) (“The Board may, under 35 U.S.C. § 312(a), accept updated mandatory notices as long as the petition would not have been time-barred under 35 U.S.C. § 315(b) if it had included the real party in interest.”) (“Proppant”). In determining whether to permit a petitioner to amend its mandatory notices to add a real party-in-interest while maintaining the original filing date, we consider “whether there have been (1) attempts to circumvent the § 315(b) bar or estoppel rules, (2) bad faith by the petitioner, (3) prejudice to the patent owner caused by the delay, or (4) gamesmanship by the petitioner.” Proppant, Paper 86, 6–7.” slip op. at 44

  • Strike new argumentNot reached

    “B. Patent Owner’s Motion to Strike Patent Owner moves to strike portions of Petitioner’s Reply as “includ[ing] numerous new improper arguments, rationales, and theories.” Paper 43, 1.21 Petitioner opposes. Paper 47. Because, even when considering Petitioner’s Reply as a whole, we conclude that Petitioner fails to demonstrate, by a preponderance of the evidence, that any of the Challenged Claims are unpatentable, we dismiss Patent Owner’s motion as moot.” slip op. at 48

  • ExcludeMotion to exclude, grantedGranted

    “The moving party has the burden of proof in showing it is entitled to the requested relief. 37 C.F.R. § 42.20(c). The standard for granting a motion to seal is “good cause.” 37 C.F.R. § 42.54. “The ‘good cause’ standard for granting a motion to seal reflects the strong public policy for making all information in an inter partes review open to the public.” Argentum Pharm. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 at 3 (PTAB Jan. 19, 2018) (informative).” slip op. at 49

  Patent outcomesUS 9,596,806 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,596,806

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.