- Njoy, Inc. / CB Distributors, Inc. et al. v. Fontem Holdings 1 B.V.Institution deniedPTAB · Dec 9, 2015 · IPR2015-01302 · APJ Donna M Praiss · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–4, 8–10, and 12–17 were obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon considering the Petition and Preliminary Response, we determine that Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of claims 1–4, 8–10, and 12–17. Accordingly, we decline to institute an inter partes review of those claims.” slip op. at 2
- Skill levelOther
“For purposes of this Decision, we do not discern an appreciable difference between Petitioner’s and Patent Owner’s proposed levels of ordinary skill in the art that would impact our ultimate conclusions. We also consider the cited prior art as representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (finding the absence of specific findings on “level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“We find that these disclosures of an electronic atomization cigarette and other cigarette substitutes do not limit the shape, size, look, feel, or other sensations of the electronic cigarette of the invention beyond delivering atomization to satisfy the need for a user to experience an inhaling action. Accordingly, on the current record, we determine the broadest reasonable interpretation of the term “electronic cigarette” to be “a device for generating liquid droplets for inhalation by a user, where the device functions as a substitute for smoking, e.g., by providing nicotine without tar.”” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not found
“We are not persuaded, however, that these observations of the prior art provide a rational basis for combining the separate embodiments of Takeuchi, namely the intercommunicating pore structure 302 and the rod-like heater 74, together with the resistive wire coil of Counts, in the configuration required by independent claims 1 and 14. Where the claimed subject matter cannot be fairly characterized as involving the simple substitution of one known element for another, there must be a showing of “an apparent reason to combine the known elements in the fashion claimed . . . .” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)).” slip op. at 20
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 8,893,726 - Njoy, Inc / CB Distributors, Inc. et al. v. Fontem Holdings 1 B.V.Institution deniedPTAB · Dec 9, 2015 · IPR2015-01304 · APJ Josiah C Cocks · IPR · Institution
The Board denied institution because the petition did not establish a reasonable likelihood of showing claims 1–3, 5–15, 17, and 18 unpatentable over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“and triggering of a light source such as an LED, the parties’ dispute, at its heart, centers on whether a skilled artisan would have known to “program” a controller to effect gradual change in luminance of an electronic cigarette. See Pet. 18–19; PO Resp. 21–22. Petitioner relies heavily on Dr. Nayfeh’s testimony at paragraph 62 of his Declaration in proposing that a person of ordinary skill would have had such knowledge. Upon review, however, we observe that the paragraph spanning pages 18 and 19 of the Petition (reproduced above) is taken verbatim from Dr. Nayfeh’s Declaration. The only proffered support for the premise that a skilled artisan would have known that “control programs could be loaded to configure the controller for control functions such as control of luminance,” is the disclosure in Mielordt that a controller is configured to control a heater, and the general statement in Mielordt that “software” can be used to adjust air temperature or a dire unit’s speed for a “particular smoking profile.” See Ex. 1004, 6:8–13. Petitioner does not explain adequately its leap in logic in advocating that a skilled artisan somehow also would have known from Mielordt’s teachings that a light source may be controlled as to present a gradual change in luminance. Petitioner’s reliance on Dr. Nayfeh’s testimony is unavailing in meeting its burden to cause the institution of trial based on Hongbin and Mielordt. Indeed, Dr. Nayfeh’s testimony is conclusory, and lacks little if any explanation for the positions to which he attests. Nothing requires a fact finder to credit unexplained testimony of an expert. See Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997).” slip op. at 12
- Expert testimonyPetitioner expert discountedDecided for patent owner
“and triggering of a light source such as an LED, the parties’ dispute, at its heart, centers on whether a skilled artisan would have known to “program” a controller to effect gradual change in luminance of an electronic cigarette. See Pet. 18–19; PO Resp. 21–22. Petitioner relies heavily on Dr. Nayfeh’s testimony at paragraph 62 of his Declaration in proposing that a person of ordinary skill would have had such knowledge. Upon review, however, we observe that the paragraph spanning pages 18 and 19 of the Petition (reproduced above) is taken verbatim from Dr. Nayfeh’s Declaration. The only proffered support for the premise that a skilled artisan would have known that “control programs could be loaded to configure the controller for control functions such as control of luminance,” is the disclosure in Mielordt that a controller is configured to control a heater, and the general statement in Mielordt that “software” can be used to adjust air temperature or a dire unit’s speed for a “particular smoking profile.” See Ex. 1004, 6:8–13. Petitioner does not explain adequately its leap in logic in advocating that a skilled artisan somehow also would have known from Mielordt’s teachings that a light source may be controlled as to present a gradual change in luminance. Petitioner’s reliance on Dr. Nayfeh’s testimony is unavailing in meeting its burden to cause the institution of trial based on Hongbin and Mielordt. Indeed, Dr. Nayfeh’s testimony is conclusory, and lacks little if any explanation for the positions to which he attests. Nothing requires a fact finder to credit unexplained testimony of an expert. See Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997).” slip op. at 12
NonePatents in suitUS 8,899,239 - Njoy, Inc. / CB Distributors, Inc. et al. v. Fontem Holdings 1 B.V.Institution deniedPTAB · Dec 8, 2015 · IPR2015-01301 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 were unpatentable under either asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“person having ordinary skill in the art would attempt to modify Hon ’134 by looking to Gilbert. Petitioner and Dr. Nayfeh contend that each element of the ’752 patent was known in the prior art, but an articulated reasoning with rational underpinning as to why a person having ordinary skill in the art would have combined the elements to achieve the claimed invention is missing. Without such articulated reasoning, Petitioner’s contentions are insufficient to establish that the claims of the ’752 patent would have been obvious based on the combination of Hon ’134 and Gilbert. See Cheese Sys. Inc. v. Tetra Pak Cheese and Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013) (“Obviousness cannot be based on the hindsight combination of components selectively culled from the prior art to fit the parameters of the patented invention.” (internal quotation marks omitted)). As explained in KSR, “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.” KSR, 550 U.S. at 418. For these reasons, Petitioner has not established a reasonable likelihood that it would prevail on the ground that claims 1–3, 6–11, and 13– 20 would have been obvious under 35 U.S.C. § 103 over the combination of Hon ’134 and Gilbert. C.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“in the art would be motivated to combine Hon ’134 and Gilbert because “[t]o use the screw thread electrode of Gilbert asks a POSA to merely ‘implement a predictable variation’ of Hon ’134” and “is a combination of known elements with predictable results” (Pet. 20–21), this argument is equally unavailing. These conclusory statements are nothing more than a restatement of basic tests identified by the Supreme Court for determining whether an invention would have been obvious. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) (“whether the improvement is more than the predictable use of prior elements according to their established functions”). General principles on what may constitute a supporting rationale cannot substitute for specific application of those principles to the facts. Petitioner does not provide a persuasive, fact-based analysis to support the asserted combination of Hon ’134 and Gilbert. Accordingly, we are not persuaded that the Petition establishes why a person having ordinary skill in the art would attempt to modify Hon ’134 by looking to Gilbert. Petitioner and Dr. Nayfeh contend that each element of the ’752 patent was known in the prior art, but an articulated reasoning with rational underpinning as to why a person having ordinary skill in the art would have combined the elements to achieve the claimed invention is missing. Without such articulated reasoning, Petitioner’s contentions are insufficient to establish that the claims of the ’752 patent would have been obvious based on the combination of Hon ’134 and Gilbert. See Cheese Sys. Inc. v. Tetra Pak Cheese and Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013) (“Obviousness cannot be based on the hindsight combination of components selectively culled from the prior art to fit the parameters of the patented invention.” (internal quotation marks omitted)). As explained in KSR, “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.” KSR, 550 U.S. at 418.” slip op. at 11
- Skill levelOther
“suggests that the vaporization nozzle is connected with a screw thread electrode is premised on Petitioner’s interpretation of Figure 3. See Pet. 14– 16. Petitioner and Dr. Nayfeh assert that the two parallel lines identified as electrode lead wire 401 in Figure 3 depict the outline of a single wire, but do not explain adequately why a person having ordinary skill in the art would interpret Figure 3 in this manner. Although Petitioner and Dr. Nayfeh suggest that the depiction of heating wire 402 using two lines to form an outline of the single wire confirms that electrode lead wire 401 is similarly depicted, it is not apparent from Figure 3 that heating wire 402 is depicted as Petitioner and Dr. Nayfeh describe. See Pet. 15; Ex. 1002 ¶ 30. Neither Petitioner nor Dr. Nayfeh direct us to statements in Hon ’134 that support the assertion that lead electrode wire 401 is a single wire. On the contrary, as Patent Owner notes, Hon ’134 includes other figures that use two lines to depict paired wires, such as electrodes 508, 509, and 510 shown in Figure 5. Prelim. Resp. 30–31; see Ex. 1001, 8:27–28, Fig. 5. We also are persuaded by Patent Owner’s argument that Hon ’134’s use of the singular form when referring to “lead electrode wire 401” was not necessarily meant to limit it to a single wire, as “Hon ’134 uses the singular form for ‘spring 506,’ ‘alloy wire 507,’ and ‘pinch roller 602’ in the specification, but Figures 5 and 6 show two or more of each of these elements in the illustrate[d] embodiments.” Prelim. Resp. 32. For these reasons, we are not persuaded that Petitioner has established sufficiently that Hon ’134 suggests the use of a screw thread electrode.” slip op. at 10
§ 103 obviousnesscites KSRPatents in suitUS 8,863,752 - Njoy, Inc. / CB Distributors, Inc. et al. v. Fontem Holdings 1 B.V.Institution deniedPTAB · Dec 8, 2015 · IPR2015-01299 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution because Petitioner did not establish a reasonable likelihood of showing claims 1–11, 17, 19, and 20 unpatentable on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“A showing of obviousness must be supported by an articulated reasoning with rational underpinning to support a motivation to combine the prior art teachings. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”)). Petitioner asserts that a person having ordinary skill in the art, considering together the teachings of Higgins, Ingebrethsen, and Haglund, “would have had reason to surround the coil of Higgins with a tube made of a fiber material, to efficiently transfer sufficient heat from the coil to the liquid tobacco flavor medium to cause a vapor (and ultimately an aerosol) to form.” Pet. 23. Petitioner, however, does not provide sufficient explanation as to why a person having ordinary skill in the art would have wanted to provide more efficient heat transfer in the Higgins electronic smoking article. Petitioner does not direct us to, nor do we discern, statements in Higgins with respect to the efficiency—or inefficiency—of heating within the described article.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“A showing of obviousness must be supported by an articulated reasoning with rational underpinning to support a motivation to combine the prior art teachings. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”)). Petitioner asserts that a person having ordinary skill in the art, considering together the teachings of Higgins, Ingebrethsen, and Haglund, “would have had reason to surround the coil of Higgins with a tube made of a fiber material, to efficiently transfer sufficient heat from the coil to the liquid tobacco flavor medium to cause a vapor (and ultimately an aerosol) to form.” Pet. 23. Petitioner, however, does not provide sufficient explanation as to why a person having ordinary skill in the art would have wanted to provide more efficient heat transfer in the Higgins electronic smoking article. Petitioner does not direct us to, nor do we discern, statements in Higgins with respect to the efficiency—or inefficiency—of heating within the described article.” slip op. at 11
§ 103 obviousnesscites KSRPatents in suitUS 8,910,641 - PTAB · Dec 7, 2015 · IPR2015-01027 · APJ Josiah C Cocks · IPR · Order
The Board granted the joint motion to terminate the inter partes review as to both CB Distributors, Inc. and DR Distributors, LLC and Fontem Holdings 1 B.V., without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“settlement, and may identify independently any question of patentability. 37 C.F.R. § 42.74(a). Generally, however, the Board expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” The” slip op. at 2
NonePatents in suitUS 8,689,805 - Umicore AG & Co. KG v. BASF CorporationRehearing grantedPTAB · Dec 7, 2015 · IPR2015-01124 · APJ Jo-Anne M Kokoski · IPR · Rehearing
Granted Patent Owner’s rehearing request and limited trial to the listed § 103 grounds, excluding claims 17, 18, 21, and 22.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“We agree that we overlooked Patent Owner’s arguments that Petitioner failed to demonstrate sufficiently that Maeshima, Breck, and Dedecek disclose or suggest the SAR values recited in claims 17, 18, 21, and 22. Upon further consideration, we agree with Patent Owner that Petitioner has not offered adequate evidence demonstrating that the higher SAR values required by claims 17, 18, 21, and 22 would have been obvious to a person having ordinary skill in the art over the combination of Maeshima and Breck, or over the combination of Dedecek and Breck. See, e.g., Pet. 13–14, 43; Ex. 1108 ¶¶ 122–129. Patent Owner’s Request for Rehearing is granted.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We agree that we overlooked Patent Owner’s arguments that Petitioner failed to demonstrate sufficiently that Maeshima, Breck, and Dedecek disclose or suggest the SAR values recited in claims 17, 18, 21, and 22. Upon further consideration, we agree with Patent Owner that Petitioner has not offered adequate evidence demonstrating that the higher SAR values required by claims 17, 18, 21, and 22 would have been obvious to a person having ordinary skill in the art over the combination of Maeshima and Breck, or over the combination of Dedecek and Breck. See, e.g., Pet. 13–14, 43; Ex. 1108 ¶¶ 122–129.” slip op. at 3
§ 103 obviousnessPatents in suitUS 8,404,203 - Kaiser Aluminum v. Constellium Rolled Products Ravenswood, LLCNo claims unpatentablePTAB · Nov 2, 2015 · IPR2014-01002 · APJ Jo-Anne M Kokoski · IPR · Final written decision
Claim 10 was not shown unpatentable under § 103 over Balmuth1, the Starke Reference, or ’662 Balmuth combined with ’910 Pickens.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim Interpretation We interpret claims of an unexpired patent using the “broadest reasonable construction in light of the specification of the patent in which [the claims] appear[].” 37 C.F.R. § 42.100(b). Under this standard, claim terms are given their ordinary and customary meaning in view of the specification, as would be understood by one of ordinary skill in the art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). For purposes of our Decision to Institute, we determined that the terms in the challenged claims did not need to be construed expressly, and we see no reason to modify that determination in light of the record developed at trial. B.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“Given the complexities involved in developing a thick plate composition from a thin sheet, and the breadth of potential applications within the aerospace industry, we determine that Mr. Balmuth and Dr. Starke fail to provide sufficient reasoning as to why one of ordinary skill in the art would have attempted to manufacture thick plates having the claimed properties from the thin sheets described in the prior art. See, e.g., InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1348–49 (Fed. Cir. 2014) (holding expert testimony to be impermissible hindsight for failing to explain what reason or motivation one of ordinary skill in the art at the time of the invention would have had to place the prior art together). In an obviousness determination, we must avoid analyzing the prior art through the prism of hindsight. Instead, we must “cast the mind back to the time the invention was made” and “occupy the mind of one skilled in the art who is presented only with the references, and who is normally guided by the then-accepted wisdom in the art.” W.L. Gore & Assoc., Inc. v. Garlock, 721 F.2d 1540, 1553 (Fed. Cir. 1983). Here, Petitioner attempts to imbue one of ordinary skill in the art with knowledge of the claimed invention, when there is insufficient evidence of record to convey or suggest that knowledge. Rather, Petitioner’s arguments that a person having ordinary skill in the art would have only needed to use routine experimentation to manufacture a thick plate alloy having the claimed properties appears to be premised on Petitioner’s knowledge of the ’509 patent itself. See, e.g., Pet. 20 (“In this case, the ’509 patent confirmed that the chemistry in the Balmuth1 reference relating to sheet material could be used for plate products without adjusting the chemistry to arrive at the beneficial strength and toughness properties using merely routine testing procedures.”). Petitioner’s contentions that it would have been obvious to try to manufacture thick plates having the claimed properties and that “one of ordinary skill in the art had a ‘good reason to pursue the known options within his . . . technical grasp’” to do so similarly are insufficient. See Pet. 22; id. at 21–24. The Federal Circuit has held that “a finite number of identified, predictable solutions” may support an inference of obviousness, but “[t]o the extent an art is unpredictable, as the chemical arts often are, KSR’s focus on these ‘identified, predictable solutions’ may present a difficult hurdle because potential solutions are less likely to be genuinely predictable.” Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353, 1359 (Fed. Cir. 2008) (citing KSR, 550 U.S. at 421 (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has a good reason to pursue known options within this or her technical grasp.”)). As set forth above, we credit Dr. Pickens’s testimony that designing a thick plate alloy product having the claimed properties from a thin sheet alloy product would be costly and unpredictable. Accordingly, Petitioner has not shown sufficiently that a person having ordinary skill in the art would have considered it obvious to try to manufacture a thick plate composition with the properties recited in claim 10 of the ’509 patent.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentable
“In an obviousness determination, we must avoid analyzing the prior art through the prism of hindsight. Instead, we must “cast the mind back to the time the invention was made” and “occupy the mind of one skilled in the art who is presented only with the references, and who is normally guided by the then-accepted wisdom in the art.” W.L. Gore & Assoc., Inc. v. Garlock, 721 F.2d 1540, 1553 (Fed. Cir. 1983). Here, Petitioner attempts to imbue one of ordinary skill in the art with knowledge of the claimed invention, when there is insufficient evidence of record to convey or suggest that knowledge. Rather, Petitioner’s arguments that a person having ordinary skill in the art would have only needed to use routine experimentation to manufacture a thick plate alloy having the claimed properties appears to be premised on Petitioner’s knowledge of the ’509 patent itself. See, e.g., Pet. 20 (“In this case, the ’509 patent confirmed that the chemistry in the Balmuth1 reference relating to sheet material could be used for plate products without adjusting the chemistry to arrive at the beneficial strength and toughness properties using merely routine testing procedures.”). Petitioner’s contentions that it would have been obvious to try to manufacture thick plates having the claimed properties and that “one of ordinary skill in the art had a ‘good reason to pursue the known options within his . . . technical grasp’” to do so similarly are insufficient. See Pet. 22; id. at 21–24. The Federal Circuit has held that “a finite number of identified, predictable solutions” may support an inference of obviousness, but “[t]o the extent an art is unpredictable, as the chemical arts often are, KSR’s focus on these ‘identified, predictable solutions’ may present a difficult hurdle because potential solutions are less likely to be genuinely predictable.” Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353, 1359 (Fed. Cir. 2008) (citing KSR, 550 U.S. at 421 (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has a good reason to pursue known options within this or her technical grasp.”)). As set forth above, we credit Dr. Pickens’s testimony that designing a thick plate alloy product having the claimed properties from a thin sheet alloy product would be costly and unpredictable. Accordingly, Petitioner has not shown sufficiently that a person having ordinary skill in the art would have considered it obvious to try to manufacture a thick plate composition with the properties recited in claim 10 of the ’509 patent.” slip op. at 16
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“to be persuasive. In order to rely on inherency to establish the existence of a missing claim limitation in an obviousness analysis, “the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art.” PAR Pharma., Inc. v. TWI Pharmas., Inc., 773 F.3d 1186, 1195–96 (Fed. Cir. 2014). Neither Mr. Balmuth’s nor Dr. Starke’s statements regarding the inherent properties of a thick plate with the same chemistry as a thin sheet are supported by sufficient objective evidence or analysis demonstrating that the claimed properties would necessarily be present in the thick plate. Mr. Balmuth and Dr. Starke simply state that such a thick plate would inherently have the properties necessitated by the chemistry involved, without providing sufficient and credible explanations as to why that would be the case. See Ex. 1006 ¶ 13; Ex. 1008 ¶ 32. Mr. Balmuth, for example, states that “it is generally understood that the strength and fracture toughness properties of a plate are less than those of a sheet having similar chemistry,” but that “one of ordinary skill in the art would predict improved properties for a plate upon a showing of improved properties in a sheet having similar chemistry,” and does not expound upon the reasons why a person skilled in the art would understand that to mean that the thick plate would display the same mechanical properties as the thin sheet. See Ex. 1006 ¶ 14. Based upon the evidence presented, we find that the opinions of Mr. Balmuth and Dr. Starke are not persuasive as they are not supported by the evidence of record. 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.”); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (stating a lack of objective support for an expert opinion “may render the testimony of little probative value in [a patentability] determination”). Patent Owner, in contrast, provides reasoning as to why a person having ordinary skill in the art would not have understood that a thick plate would have similar properties to a thin sheet having the same chemistry. PO Resp. 13–14, 34–35, 37–40, 42–44. For example, Patent Owner notes that since according to Mr. Balmuth you ‘don’t have the ability’ or ‘any interest’ in measuring toughness in the S-T direction in sheet, Petitioner has not established that the strength and toughness properties in sheet would necessarily be predictive of the strength and toughness properties of plate, such as described in Claim 10. Id. at 14. Dr. Pickens also testified to the complexities involved in developing thick plate aluminum-lithium alloys: For example, quench sensitivity, stress-corrosion cracking resistance, in plane anisotropy, through thickness heterogeneity, and lower short transverse fracture toughness are a few factors that make developing thick plate aluminum-lithium alloys very complicated. Furthermore, lithium lowers the thermal conductivity of aluminum which is problematic in several areas. Heat is more difficult to extract during direct-chill casting thereby exacerbating metallurgical segregation problems. Hot rolling can break down segregation, such as heterogeneous segregations at grain boundaries, so that it may be less harmful, although there is a practical limit on how thick aluminum alloy rolling ingot can be cast. The reduction ratio, i.e. scalped ingot thickness to final product gauge, is an important real-world processing variable when developing a thick plate aluminum lithium alloy. Ex. 2043 ¶ 11; see also PO Resp. 16–17 (discussing the “recognition in the art of complex differences between sheet and thick plate”). Patent Owner further notes that Dr. Pickens testified “that he would not have been motivated to add Mn in the claimed amount to an Al-Cu-Li-Mg-Ag alloy with a thickness of at least about 3 inches, or scale up a sheet alloy to the” slip op. at 11
Patent outcomesUS 7,229,509 not shown unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,229,509 - Servicenow, Inc. v. Hewlett-Packard Co.Rehearing deniedPTAB · Nov 2, 2015 · IPR2015-00716 · APJ James B Arpin · IPR · Rehearing
The Board denied ServiceNow’s rehearing request, leaving institution denied for all challenged claims because the evidence did not show a reasonable likelihood that the Collaborate References were publicly accessible printed publications.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“(emphasis added). In addition, “[e]vidence not already of record at the time of the decision will not be admitted [with a request for rehearing] absent a showing of good cause.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012) (emphasis added). When reconsidering a Decision on Institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Petitioner fails to make the critical link between the alleged identification of the Collaborate References on the “download page” and the exhibits relied upon in support of its asserted grounds. Despite Petitioner’s arguments and assertion that this “page” was publicly accessible “by no later than August 29, 2001,” Petitioner fails to demonstrate Exhibits 1004–1006, which Petitioner relies upon in support of each of the asserted grounds, were publicly accessible through the webpages included in Exhibit A to the Butler Affidavit more than one year prior to May 14, 2003. See Pet. 21; Ex. 1002 ¶ 205.” slip op. at 4
- ExcludeDecided for petitioner
“of the copyright notices on Exhibits 1004–1006 in our Decision on Institution. We did not “sustain” Patent Owner’s evidentiary objection; Petitioner’s evidence was neither excluded from the record nor denied consideration. Cf. 37 C.F.R. § 42.64. In fact, as our Decision on Institution makes clear, the evidence of the copyright notices was considered fully, along with the other evidence presented by the parties, in reaching our determination on the public accessibility of Exhibits 1004– 1006. See Dec. 15–17. Specifically, on this record, we were not persuaded that the copyright notices are entitled to any greater weight than that afforded to hearsay in determining public accessibility. Id. at 17.” slip op. at 9
§ 102 anticipationPatents in suitUS 7,945,860 - Boku, Inc. / Boku Account Services, Inc. v. Xilidev, Inc.Some claims unpatentablePTAB · Nov 2, 2015 · CBM2014-00148 · APJ Justin T Arbes · CBM · Final written decision
Claims 1–18 and 20–23 are unpatentable; claim 19 was not shown unpatentable because Gerson does not disclose its product identification code and quantity limitations.
RulingsFinal written decision- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable
“the particular function of the limitation and then identifying the corresponding structure for that function in the specification. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1351 (Fed. Cir. 2015). A structure is corresponding “only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311 (Fed. Cir. 2001) (quotation omitted). Additionally, the corresponding structure of a means-plus-function limitation must be “more than simply a general purpose computer or microprocessor” to avoid pure functional claiming. Williamson, 792 F.3d at 1352 (citing Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008)). If a special purpose computer is required to carry out the recited function, the specification must disclose an “algorithm for performing the claimed function,” id., which may be expressed “in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure,” Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (citation omitted). “[I]f a person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim, a means-plus-function clause is indefinite” under 35 U.S.C. § 112, second paragraph. Williamson, 792 F.3d at 1352.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“discloses every limitation of claims 12–16 and 18. For example, with respect to claim 12, Petitioner asserts, with supporting testimony from Dr. Shamos, that Gerson discloses (1) a “payment authorization source” (i.e., bank or other financial institution) configured to authorize payment for a transaction; (2) a “payment resolution module” (i.e., central processing computer) in communication with the bank or other financial institution; (3) a “hand-held device” (i.e., user’s mobile phone) in communication with the central processing computer that transmits an authorization request (i.e., payment transaction) to the central processing computer; and (4) a “confirmation device” (i.e., POST) that receives an “authorization code” (i.e., transaction-specific authorization code) from the user and authorizes the transaction in response to validating the authorization code. -140 Pet. 69–73; see Ex. 1003, 83–90. Petitioner further argues that Gerson necessarily includes an “I/O interface” because the central processing computer transmits (i.e., outputs) the transaction-specific authorization code to the mobile phone via a “wireless telecommunications link,” and such transmission requires an I/O interface between the mobile phone and central processing computer. -140 Pet. 71–72 (citing Ex. 1005, 6 (ll. 8–14)). We also have reviewed Petitioner’s arguments and evidence for the other challenged claims, and are persuaded that Petitioner has met its burden of demonstrating anticipation by a preponderance of the evidence. Based on all of the evidence of record, we determine that Petitioner has shown, by a preponderance of the evidence, that claims 12–16 and 18 are anticipated by Gerson under 35 U.S.C. § 102(b).” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“It would have been obvious to combine Gerson’s system storing the authorization code in a processor with Wronski’s database additionally storing an indication of the transaction request because in both cases the information relates to the transaction being authorized and therefore Wronski merely stores additional information about the same transaction that Gerson does. Furthermore, a user in Gerson would be motivated to combine the processor database with Wronski’s database including an indication of the transaction request because such a combination would facilitate the later retrieval of transaction specific information (such as when Gerson’s processor database is accessed by the point-of-sale system).” slip op. at 20
- Skill levelSkill level board ownOther
“between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 405 (2007) (quoting 35 U.S.C. § 103(a)). Dr. Shamos testifies that he believes a person of ordinary skill in the art would have had “an undergraduate degree in computer science, or equivalent work experience, and, in addition, at least two years of experience with electronic payment systems, including familiarity with databases and integration with interactive voice response software.” Ex. 1003 ¶ 14; see -140 Pet. 11. Based on the record presented, including our review of the ’168 patent and the types of problems and solutions described in the ’168 patent and cited prior art, we determine that a person of ordinary skill in the art would have had an undergraduate degree in computer science (or equivalent work experience) and at least two years of experience with electronic payment systems, including familiarity with databases. We apply this level of ordinary skill in the art for purposes of this Decision. Although a person of ordinary skill in the art may have had experience with interactive voice response software, we do not see why such experience should be required, as the ’168 patent discloses that “various communication mediums and protocols [for interacting with users were] known in the art,” of which interactive voice response is merely one example. See, e.g., Ex. 1001, col. 5, ll. 4–52.” slip op. at 18
Patent outcomesUS 7,273,168 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 7,273,168 - Boku, Inc. / Boku Account Services, Inc. v. Xilidev, Inc.Some claims unpatentablePTAB · Nov 2, 2015 · CBM2014-00140 · APJ Justin T Arbes · CBM · Final written decision
Claims 1–18 and 20–23 are unpatentable: claim 17 is indefinite, claims 12–16 and 18 are anticipated by Gerson, claims 1–11 and 20–23 are obvious over Gerson and Wronski, and claims 1–5, 7–16, 18, and 20–23 …
RulingsFinal written decision- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable
“the particular function of the limitation and then identifying the corresponding structure for that function in the specification. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1351 (Fed. Cir. 2015). A structure is corresponding “only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311 (Fed. Cir. 2001) (quotation omitted). Additionally, the corresponding structure of a means-plus-function limitation must be “more than simply a general purpose computer or microprocessor” to avoid pure functional claiming. Williamson, 792 F.3d at 1352 (citing Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008)). If a special purpose computer is required to carry out the recited function, the specification must disclose an “algorithm for performing the claimed function,” id., which may be expressed “in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure,” Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (citation omitted). “[I]f a person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim, a means-plus-function clause is indefinite” under 35 U.S.C. § 112, second paragraph. Williamson, 792 F.3d at 1352.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Petitioner has not shown that Gerson discloses, expressly or inherently, a hand-held device providing a product identification code and product quantity (in addition to the transaction amount), and we do not find any such disclosure in the reference. The mobile phone in Gerson only provides the purchase amount. See Ex. 1005, 3 (ll. 22–23), 7 (ll. 6–13). Further, Petitioner’s assertion that it “would have been obvious” to also provide a product identification code and product quantity is insufficient to prove anticipation. See -140 Pet. 79–80; Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1255–56 (Fed. Cir. 1989) (“Anticipation requires that every limitation of the claim in issue be disclosed, either expressly or under principles of inherency, in a single prior art reference.”). Based on all of the evidence of record, we determine that Petitioner has not shown, by a preponderance of the evidence, that claim 19 is anticipated by Gerson under 35 U.S.C. § 102(b).” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“It would have been obvious to combine Gerson’s system storing the authorization code in a processor with Wronski’s database additionally storing an indication of the transaction request because in both cases the information relates to the transaction being authorized and therefore Wronski merely stores additional information about the same transaction that Gerson does. Furthermore, a user in Gerson would be motivated to combine the processor database with Wronski’s database including an indication of the transaction request because such a combination would facilitate the later retrieval of transaction specific information (such as when Gerson’s processor database is accessed by the point-of-sale system).” slip op. at 20
- Skill levelSkill level board ownDecided for petitioner
“between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 405 (2007) (quoting 35 U.S.C. § 103(a)). Dr. Shamos testifies that he believes a person of ordinary skill in the art would have had “an undergraduate degree in computer science, or equivalent work experience, and, in addition, at least two years of experience with electronic payment systems, including familiarity with databases and integration with interactive voice response software.” Ex. 1003 ¶ 14; see -140 Pet. 11. Based on the record presented, including our review of the ’168 patent and the types of problems and solutions described in the ’168 patent and cited prior art, we determine that a person of ordinary skill in the art would have had an undergraduate degree in computer science (or equivalent work experience) and at least two years of experience with electronic payment systems, including familiarity with databases. We apply this level of ordinary skill in the art for purposes of this Decision. Although a person of ordinary skill in the art may have had experience with interactive voice response software, we do not see why such experience should be required, as the ’168 patent discloses that “various communication mediums and protocols [for interacting with users were] known in the art,” of which interactive voice response is merely one example. See, e.g., Ex. 1001, col. 5, ll. 4–52.” slip op. at 18
Patent outcomesUS 7,273,168 mixed§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 7,273,168
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.