• Candela Corporation v. Nikolai TankovichNo claims unpatentable
  PTAB · Jun 5, 2024 · IPR2023-00234 · APJ Sheridan K Snedden · IPR · Final written decision

  The Board held claims 1–28 not shown unpatentable because the asserted combinations did not establish simultaneous delivery of overlapping and non-overlapping laser beams.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 19; Ex. 1002 ¶ 77. Patent Owner does not dispute this proposed level of skill, but offers that a “POSA may have alternatively held a degree in electrical engineering.” PO Resp. 10; Ex. 4–10, 13, 15–17. We adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the cited prior art and is undisputed on this record, and also consider Patent Owner’s additional proposal. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating that the prior art itself may reflect an appropriate skill level).” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed patent owner constructionDecided for patent owner

    “In this case, the Specification is devoted to the teaching simultaneous delivery of multiple laser beams. The Specification begins by stating that “[t]here are no lasers or laser handpieces on the market today that can simultaneously deliver two or more wavelengths of laser energy in spacial, fractional form.” Ex. 1001, 1:12–14. The Specification explains that “laser treatment usually requires different modalities of energy in order [to] successfully treat the pathologies to which they are applied,” but that “the sequential application of multiple wavelengths of laser energy compromises the treatment.” Id. at 1:16–25. The Specification then continues to explain various problems associated with the sequential application of multiple wavelengths. Id. at 1:25–52. The Specification concludes its introduction as follows: What is needed in the art therefore is an effective laser therapy system that can simultaneously deliver multiple wavelengths of laser energy through the use of a single laser unit without producing interference between the wavelengths within the treated tissue.” slip op. at 13

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

    “summarized above, we find Patent Owner to have the better position. In particular, we agree with Patent Owner that the combination of Hsia and Black fail to teach or suggest simultaneously delivering non-overlapping beams. The combination also fails to teach or suggest producing beam patterns that include both overlapping and non-overlapping beams. PO Resp. 34. To begin, while we recognize that Hsia discloses overlapping and non-overlapping treatment patterns, those patterns are achieved by the sequential delivery of laser beams as a user physically moves a single handpiece that delivers a single beam across the skin of a patient. Ex. 1004 ¶ 68, Figs. 8 and 9; Ex. 2001 ¶¶ 73–74. Black does not cure that deficiency as Black does not disclose treatment with non-overlapping beams. Ex. 2001 ¶ 99. Black discloses using a “refractive optics, mirror-based optical delivery device” for the simultaneous delivery of multiple overlapping laser beams. Ex. 1006 ¶¶ 12– 13. The beams align on an optical path and, using different laser beam parameters, deliver treatment at various depths within a combined beam path. Id. ¶¶ 54, 58–59. Thus, while Black may be characterized as creating overlapping beams, we do not find sufficient support for a finding that Black teaches or suggests creating non-overlapping beams for simultaneous delivery, and the claims require both. We also do not find sufficient support for Petitioner’s claim that a POSA would have found it obvious to combine Black and Hsia to simultaneously produce both overlapping beams and nonoverlapping beams, based on the disclosures in these references. See, e.g.,” slip op. at 31

  • BurdenFwd all claims patentableNot shown unpatentable

    “Claims Claims Not 35 U.S.C. § Reference(s)/ Claims Shown Shown Basis Unpatentable Unpatentable 1–28 103 Hsia, Black 1–28 Hsia, Black, 23 103 23 Negus Hsia, Black, 27, 28 103 27, 28 Altshuler Altshuler, 1–28 103 1–28 Black Altshuler, 23 103 23 Black, Negus Overall Outcome 1–28 IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that Petitioner has not shown by a preponderance of the evidence that claims 1–28 of the ’481 patent are unpatentable; and” slip op. at 41

  Patent outcomesUS 10,675,481 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,675,481
• Restem, LLC. v. Jadi Cell, LLCNo claims unpatentable
  PTAB · Apr 18, 2023 · IPR2021-01535 · APJ Devon Zastrow Newman · IPR · Final written decision

  Claims 1–15 were not proven unpatentable: Majore did not anticipate claims 1–13 and 15, and the asserted obviousness combinations did not establish the claimed limitations.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Ex. 1007 ¶¶ 132, 133. Importantly, however, Dr. Olson does not cite anything to support his opinion that the ordinary artisan would have known that MSCs could be cultured to be renewable from subepithelial UC tissue. Nor does Dr. Olson explain why the artisan would have had this understanding aside from simply stating it. Majore uses the word “subepithelial” only once to explain that primitive stem cells are “distributed in subepithelial and intervascular regions,” but this does not teach what Dr. Olson asserts. Accordingly, Dr. Olson’s testimony is entitled to little weight. Xerox Corp., IPR2022-00624, Paper 9 at 15–16 (finding that an expert’s conclusory assertions that repeat the proposition for which they are offered without “any additional supporting evidence or provide any technical reasoning” in support are “conclusory and unsupported, add[] little to the conclusory assertion[s] for which [they are] offered to support, and is” slip op. at 52

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

    “21 The parties do not dispute that the preamble’s recitation of “isolated cell” serves as a limitation to claim 1 as it provides antecedent basis for its recitation later in the body of the claim. Accordingly, we treat the preamble as limiting. “When limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.” See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003).” slip op. at 31

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

    “[JUDGE NEWMAN:] So if -- if the comparison is possible, why did you not present evidence of that comparison? MR. FITZPATRICK: We --we’ve had the -- we had this discussion with our -- with our expert, and our conclusion was that it’s just not -- it wasn’t necessary. The conclusion was that the -- the evidence that’s in the -- in the prior art references, including the fact that it clearly practices the exact same steps as the claims, that was sufficient to -- and would anticipate or render obvious the claims. That’s the only reason we didn’t present evidence -- our own evidence.” slip op. at 38

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

    “Ex. 1007 ¶ 168 (alteration in original). We agree that an ordinary artisan would be motivated to look to the teachings of analogous references for information, but to establish obviousness, a party must show that “there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Petitioner has not provided sufficient rationale to explain why the ordinary artisan would have been motivated to make the isolated cell with the specific marker profile or why the artisan would have looked to the cited references themselves out of the wide range of references available in the art.” slip op. at 64

  Patent outcomesUS 9,803,176 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,803,176
• Cisco Systems, Inc. / Forescout Technologies, Inc. et al. v. K.Mizra LLCNo claims unpatentable
  PTAB · Sep 19, 2022 · IPR2022-00084 · APJ Minn Chung · IPR · Final written decision

  Claims 1–3, 5–13, and 15–19 were not shown unpatentable under § 103 over Gleichauf, Ovadia, and Lewis because the petitioner did not sufficiently explain why a skilled artisan would have combined Gleichauf and Lewis as …

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedOther

    “Dr. Reddy additionally testifies that “URL redirection is a well-known concept in HTTP traffic” (Ex. 1003 ¶ 24) and that “[a person of ordinary skill in the art] would have been familiar with URL redirection, which was a common technique used to forcibly provide an alternative response to a client’s request for a web page” (id. at ¶ 134). During the oral hearing, Petitioner also stated, citing the Reddy Declaration, that “it was well known to redirect traffic to a separate server.” Tr. 17:8–12 (citing Ex. 1003 ¶ 134). This, however, does not provide a sufficient explanation why a person of ordinary skill in the art would have been motivated to combine Gleichauf and Lewis. This rationale and all of the other reasons for the proposed combination proffered by Petitioner establish, at most, that Gleichauf and Lewis could have been combined to meet limitations [1.8] and [1.9], rather than a person of ordinary skill in the art would have been motivated to make the proposed combination. This is insufficient. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”) (citing InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). We find, therefore, that Petitioner does not provide a sufficient reasoning to support obviousness of claim 1 based on the proposed combination.7 See Kinetic Concepts, 688 F.3d at 1366–67 (holding that “some kind of motivation must be shown from some source, so that the [trier of fact] can understand why a person of ordinary skill would have thought of either combining two or more references or modifying one to achieve the patented [invention]”)); InTouch Techs., 751 F.3d at 1348–49 (Fed. Cir. 2014) (“[The expert witness’s] testimony was nothing more than impermissible hindsight; she opined that all of the elements of the claims disparately existed in the prior art, but failed to provide the glue to combine these references.”).” slip op. at 36

  • Skill levelSkill level petitioner adoptedOther

    “Patent Owner does not dispute Petitioner’s articulation of the level of ordinary skill in the art. See generally PO Resp. Dr. Medvidovic, Patent Owner’s declarant, states that “[f]or the purposes of the subject IPR proceedings,” he “employ[s]” the level of ordinary skill in the art articulated by Dr. Reddy. Ex. 2009 ¶ 26. Based on the complete record, for purposes of this Decision, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art at the time of the claimed invention because Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 13

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

    “The parties dispute construction of “trusted platform module” (Pet. 13–16; PO Resp. 5–6) but do not identify any issue that would turn on the construction of this term. See generally Pet.; PO Resp. Based on the complete record, for purposes of this Decision, we determine no claim terms require express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only terms that are in controversy need to be construed, and “only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 14

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

    “Therefore, we find that Gleichauf alone provides all of the alleged benefits or advantages of the proposed combination of Gleichauf and Lewis identified by Petitioner. As discussed above, in the proposed combination of Gleichauf and Lewis, Gleichauf would be modified such that HTTP traffic from a quarantined device would not be redirected to a remediation server but instead would be redirected to a quarantine server, which serves an informational webpage to the user of the device, as taught by Lewis. Pet. 48–49; Pet. Reply 14 (citing Ex. 1005, 4:56–63, 21:1–12; Ex. 1007, 4:24– 31, 13:7–15; Pet. 48). Thus, Petitioner’s proposed combination contemplates (1) modifying Gleichauf’s network by adding a separate quarantine server, (2) modifying Gleichauf’s policy server to not redirect HTTP traffic from a quarantined device to a remediation server and to instead redirect the HTTP traffic to the quarantine server, and (3) providing a quarantine notice webpage to the user from the quarantine server, including a link to the remediation server, which the user can click on to access the remediation server. In addition, Gleichauf’s policy server would also need to be modified to not provide the notification messages to the user for HTTP traffic to avoid having both the policy server and the quarantine server provide the same or similar information displays to the user. Neither Petitioner nor Dr. Reddy explains adequately why a person of ordinary skill in the art would have been motivated to look to Lewis to introduce such significant changes to the architecture or design of Gleichauf’s network when Gleichauf alone already provides all of the alleged benefits or advantages of the proposed combination identified by Petitioner. See Pet. 26–29; Pet. Reply 14–16; Ex. 1003 ¶¶ 66–71. Thus, based on the complete record, we find that the alleged benefits or advantages of the proposed combination identified by Petitioner do not provide sufficient basis for establishing why a person of ordinary skill in the art would have been motivated to combine Gleichauf and Lewis in the manner proposed by Petitioner. See In re Anova Hearing Labs, Inc., 809 F. App’x 840, 843 (Fed. Cir. 2020) (finding that the Board’s general statements that a person of ordinary skill in the art would have combined the prior art references to address the problem of occlusion effect in hearing aids was insufficient when the Board does not explain why a person of ordinary skill in the art would have been “motivated to modify Brown, which already includes vents, to address occlusion effect”) (non-precedential); cf. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1369 (Fed. Cir. 2012) (“Because each device independently operates effectively, a person having ordinary skill in the art, who was merely seeking to create a better device to drain fluids from a wound, would have no reason to combine the features of both devices into a single device.”).” slip op. at 34

  Patent outcomesUS 8,234,705 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,234,705
• Cisco Systems, Inc. / Forescout Technologies, Inc. et al. v. K.Mizra LLCNo claims unpatentable
  PTAB · Sep 19, 2022 · IPR2022-00081 · APJ Minn Chung · IPR · Final written decision

  Claims 1–3, 5–13, and 15–19 were not shown unpatentable under § 103 because Petitioner did not sufficiently explain why a skilled artisan would combine Gleichauf and Lewis.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent training, and approximately two years of professional experience in the field of network communications, and more specifically, network security.” Pet. 10 (citing Ex. 1003 ¶ 18). Petitioner asserts that “[l]ack of professional experience can be remedied by additional education, and vice versa.” Id. (citing Ex. 1003 ¶ 18). Patent Owner does not dispute Petitioner’s articulation of the level of ordinary skill in the art. See generally PO Resp. Dr. Medvidovic, Patent Owner’s declarant, states that “[f]or the purposes of the subject IPR proceedings,” he “employ[s]” the level of ordinary skill in the art articulated by Dr. Reddy. Ex. 2009 ¶ 26. Based on the complete record, for purposes of this Decision, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art at the time of the claimed invention because Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 13

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

    “The parties dispute construction of “trusted platform module” (Pet. 13–16; PO Resp. 5–6) but do not identify any issue that would turn on the construction of this term. See generally Pet.; PO Resp. Based on the complete record, for purposes of this Decision, we determine no claim terms require express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only terms that are in controversy need to be construed, and “only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 14

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

    “Therefore, we find that Gleichauf alone provides all of the alleged benefits or advantages of the proposed combination of Gleichauf and Lewis identified by Petitioner. As discussed above, in the proposed combination of Gleichauf and Lewis, Gleichauf would be modified such that HTTP traffic from a quarantined device would not be redirected to a remediation server but instead would be redirected to a quarantine server, which serves an informational webpage to the user of the device, as taught by Lewis. Pet. 48–49; Pet. Reply 14 (citing Ex. 1005, 4:56–63, 21:1–12; Ex. 1007, 4:24– 31, 13:7–15; Pet. 48). Thus, Petitioner’s proposed combination contemplates (1) modifying Gleichauf’s network by adding a separate quarantine server, (2) modifying Gleichauf’s policy server to not redirect HTTP traffic from a quarantined device to a remediation server and to instead redirect the HTTP traffic to the quarantine server, and (3) providing a quarantine notice webpage to the user from the quarantine server, including a link to the remediation server, which the user can click on to access the remediation server. In addition, Gleichauf’s policy server would also need to be modified to not provide the notification messages to the user for HTTP traffic to avoid having both the policy server and the quarantine server provide the same or similar information displays to the user. Neither Petitioner nor Dr. Reddy explains adequately why a person of ordinary skill in the art would have been motivated to look to Lewis to introduce such significant changes to the architecture or design of Gleichauf’s network when Gleichauf alone already provides all of the alleged benefits or advantages of the proposed combination identified by Petitioner. See Pet. 26–29; Pet. Reply 14–16; Ex. 1003 ¶¶ 66–71. Thus, based on the complete record, we find that the alleged benefits or advantages of the proposed combination identified by Petitioner do not provide sufficient basis for establishing why a person of ordinary skill in the art would have been motivated to combine Gleichauf and Lewis in the manner proposed by Petitioner. See In re Anova Hearing Labs, Inc., 809 F. App’x 840, 843 (Fed. Cir. 2020) (finding that the Board’s general statements that a person of ordinary skill in the art would have combined the prior art references to address the problem of occlusion effect in hearing aids was insufficient when the Board does not explain why a person of ordinary skill in the art would have been “motivated to modify Brown, which already includes vents, to address occlusion effect”) (non-precedential); cf. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1369 (Fed. Cir. 2012) (“Because each device independently operates effectively, a person having ordinary skill in the art, who was merely seeking to create a better device to drain fluids from a wound, would have no reason to combine the features of both devices into a single device.”).” slip op. at 34

  Patent outcomesUS 8,234,705 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,234,705
• Cisco Systems, Inc. / Forescout Technologies, Inc. et al. v. K.Mizra LLCNo claims unpatentable
  PTAB · Sep 19, 2022 · IPR2021-00593 · APJ Minn Chung · IPR · Final written decision

  Claims 1–3, 5–13, and 15–19 were not shown unpatentable because Petitioner did not sufficiently explain why a skilled artisan would combine Gleichauf and Lewis as proposed.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent training, and approximately two years of professional experience in the field of network communications, and more specifically, network security.” Pet. 10 (citing Ex. 1003 ¶ 18). Petitioner asserts that “[l]ack of professional experience can be remedied by additional education, and vice versa.” Id. (citing Ex. 1003 ¶ 18). Patent Owner does not dispute Petitioner’s articulation of the level of ordinary skill in the art. See generally PO Resp. Dr. Medvidovic, Patent Owner’s declarant, states that “[f]or the purposes of the subject IPR proceedings,” he “employ[s]” the level of ordinary skill in the art articulated by Dr. Reddy. Ex. 2009 ¶ 26. Based on the complete record, for purposes of this Decision, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art at the time of the claimed invention because Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 13

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

    “The parties dispute construction of “trusted platform module” (Pet. 13–16; PO Resp. 5–6) but do not identify any issue that would turn on the construction of this term. See generally Pet.; PO Resp. Based on the complete record, for purposes of this Decision, we determine no claim terms require express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only terms that are in controversy need to be construed, and “only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 14

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

    “Therefore, we find that Gleichauf alone provides all of the alleged benefits or advantages of the proposed combination of Gleichauf and Lewis identified by Petitioner. As discussed above, in the proposed combination of Gleichauf and Lewis, Gleichauf would be modified such that HTTP traffic from a quarantined device would not be redirected to a remediation server but instead would be redirected to a quarantine server, which serves an informational webpage to the user of the device, as taught by Lewis. Pet. 48–49; Pet. Reply 14 (citing Ex. 1005, 4:56–63, 21:1–12; Ex. 1007, 4:24– 31, 13:7–15; Pet. 48). Thus, Petitioner’s proposed combination contemplates (1) modifying Gleichauf’s network by adding a separate quarantine server, (2) modifying Gleichauf’s policy server to not redirect HTTP traffic from a quarantined device to a remediation server and to instead redirect the HTTP traffic to the quarantine server, and (3) providing a quarantine notice webpage to the user from the quarantine server, including a link to the remediation server, which the user can click on to access the remediation server. In addition, Gleichauf’s policy server would also need to be modified to not provide the notification messages to the user for HTTP traffic to avoid having both the policy server and the quarantine server provide the same or similar information displays to the user. Neither Petitioner nor Dr. Reddy explains adequately why a person of ordinary skill in the art would have been motivated to look to Lewis to introduce such significant changes to the architecture or design of Gleichauf’s network when Gleichauf alone already provides all of the alleged benefits or advantages of the proposed combination identified by Petitioner. See Pet. 26–29; Pet. Reply 14–16; Ex. 1003 ¶¶ 66–71. Thus, based on the complete record, we find that the alleged benefits or advantages of the proposed combination identified by Petitioner do not provide sufficient basis for establishing why a person of ordinary skill in the art would have been motivated to combine Gleichauf and Lewis in the manner proposed by Petitioner. See In re Anova Hearing Labs, Inc., 809 F. App’x 840, 843 (Fed. Cir. 2020) (finding that the Board’s general statements that a person of ordinary skill in the art would have combined the prior art references to address the problem of occlusion effect in hearing aids was insufficient when the Board does not explain why a person of ordinary skill in the art would have been “motivated to modify Brown, which already includes vents, to address occlusion effect”) (non-precedential); cf. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1369 (Fed. Cir. 2012) (“Because each device independently operates effectively, a person having ordinary skill in the art, who was merely seeking to create a better device to drain fluids from a wound, would have no reason to combine the features of both devices into a single device.”).” slip op. at 34

  Patent outcomesUS 8,234,705 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,234,705
• ROKU, Inc. v. Universal Electronics, Inc.No claims unpatentable
  PTAB · Aug 11, 2022 · IPR2021-00455 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–9 were not shown unpatentable over Chardon and HDMI 1.3a because the combination does not disclose data that itself identifies a controllable function.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “As Patent Owner observes, the two proposals differ “in terms of the level of experience specifically with home theater systems.” Id. at 10. Because all of the challenged claims make specific reference to a “home theater device,” Petitioner’s proposal is reasonable on the current record, and is additionally supported by the testimony of Dr. Russ. See Ex. 1003 ¶¶ 15– 19. Patent Owner notes that its expert, Dr. Turnbull, agrees with Patent Owner’s proposed articulation, but that Dr. Turnbull’s “conclusions resulting from his analysis did not change when reviewing the cited references from the perspective of the level of ordinary skill in the art as proposed by the Petition.” PO Resp. 10–11 (citing Ex. 2003, 31–41). We adopt Petitioner’s articulation of the level of ordinary skill for purposes of this Decision. We note, however, that we would reach the same ultimate conclusion were we to adopt Patent Owner’s proposal.” slip op. at 17

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

    “phrase creates a degree of ambiguity, we are mindful that “the claims themselves provide substantial guidance as to the meaning of particular claim terms” and that “the context in which a term is used in the asserted claim can be highly instructive.” Phillips, 415 F.3d at 1314. In this instance, the related phrasing that appears in the “automatically adding” and “causing” limitations of issued independent claim 1 is illuminating. Both of those limitations refer to “the controllable function of the controllable appliance that was identified by the data received from the controllable appliance.” Ex. 1001, 17:11–14, 17:21–24 (emphasis added). There is no question that the only antecedent for “the data” in these limitations is the “data that functions to identify a controllable function of the controllable appliance” recited in the “receiving” limitation. See id. at 17:8–9. And there is no apparent room in the language “that was identified by the data” for the introduction or consideration of such “other information” that Petitioner would like to use “in connection with” the recited “data” to identify the controllable function. See Reply 2.” slip op. at 19

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

    “Petitioner reasons that a person of ordinary skill in the art would have combined such teachings from HDMI 1.3a with Chardon’s system because HDMI 1.3a “is a technical guide for the interoperability of the HDMI standard and how HDMI enabled devices operate,” and that “Chardon relies on HDMI capabilities to facilitate communication and monitoring-device state changes in its system.” Pet. 30–31 (citing Ex. 1005, 4:18–21; Ex. 1010, 17; Ex. 1003 ¶¶ 130–131). According to Petitioner, “[a] person of ordinary skill in the art would have therefore turned to at least one of the versions of the HDMI Specification to fill in any details in Chardon with respect to how HDMI-capable devices, such as those of Chardon and the ’486 patent operate, and would have had a reasonable expectation of success in doing so.” Id. at 31. Petitioner supports this reasoning with testimony by Dr. Russ that it is a “well-known industry practice” to rely on HDMI 1.3a as “specification of an industry standard” when “designing and building devices that implement the HDMI standard, incorporating all of the capabilities it offers.” Ex. 1003 ¶ 133. Patent Owner disputes the sufficiency of Petitioner’s showing. In” slip op. at 35

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

    “The difficulty with Petitioner’s and Dr. Russ’s position is that it is inconsistent with our adopted claim construction that the data itself identify a controllable function of the controllable appliance from which the data is received. See supra § II.C. As Patent Owner asserts, HDMI 1.3a “does not contemplate the exchange of any information that itself functions to identify a controllable function of a playback device.” PO Resp. 24 (emphasis added). All that the “Deck Status” message indicates in the example of Figure 17 is that the current status of the playback device is “Stop.” We also are not persuaded by Petitioner’s and Dr. Russ’s argument that HDMI 1.3a’s Tables 13 and 26 disclose that “Deck Info” information is returned with the “Deck Status” message, and that such “a deck status message includ[es] the features that the device can provide (e.g., play, pause, stop, etc.).” Pet. 41; Ex. 1003 ¶ 117. Reliance on such “Deck Info” information is problematic at least because it is “other information” that would be used in combination with the “Deck Status” to determine controllable functions of the controllable device, which is precluded by our adopted claim construction.” slip op. at 36

  Patent outcomesUS 10,325,486 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,325,486
• Incyte Corporation v. Concert Pharmaceuticals, Inc.No claims unpatentable
  PTAB · May 11, 2022 · PGR2021-00006 · APJ Devon Zastrow Newman · PGR · Final written decision

  The Board held claims 1–7 and 9–21 not shown unpatentable over either obviousness ground because Petitioner did not establish motivation to select Compound (I) from Silverman’s genus.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedOther

    “It is not necessary for an expert’s experience or expertise to precisely match the art at issue. SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010). However, one offering expert testimony must at least have ordinary skill in the art to provide relevant and reliable testimony that is helpful to the factfinder. Kyocera Senco Indus. Tools, Inc. v. ITC, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022). “The Board has broad discretion to assign weight to be accorded expert testimony.” Consolidated Trial Practice Guide 35 (available at https://www.uspto.gov/sites/default/files/documents/ tpgnov.pdf?MURL=). Dr. Patterson has a Ph.D. in Chemistry and over 30 years of experience in drug design, drug administration, evaluation of drug effectiveness, and participated in drug design for over 20 years. Ex. 1007 ¶¶ 4–10; Ex. 1008, 1–2. He is author or co-author on over eight peer-reviewed journal articles involving medicinal chemistry. Ex. 1007 ¶ 5. We find this level of skill to meet the qualifications for the level of skill in the art under the training and experience portion of the definition we have adopted for purposes of this opinion (see § II.B.), reproduced below: a Ph.D. in chemistry, pharmaceutical sciences, molecular biology, or a similar field, or an M.D. with similar background. A POSA would also have had at least several years of experience with drug design, drug development, clinical trials, or access to other individuals with that knowledge and experience. Likewise, a POSA would have had knowledge and experience in treating hair loss disorders, or access to a person with that knowledge and experience. We note that Dr. Patterson himself also proposes this definition. Id. ¶ 102. However, Dr. Patterson does not have “knowledge and experience in treating hair loss disorders” and did not opine that, in regards to his testimony, he had access to a person with that knowledge and experience, as is proposed in the definition. See generally, Ex. 1007. Accordingly, we find Dr. Patterson qualified to opine on the level of ordinary skill with regard to issues of drug design, evaluation of effectiveness, and drug administration, but we find he is not adequately qualified to opine on the level of ordinary skill with regard to issues of treating hair loss disorders.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner proposes the same definition as Petitioner, but adds that the skilled artisan “would also have had experience in JAK inhibition, deuteration, and AA [alopecia areata] formulations, or access to a person with that knowledge and experience.” Resp. 15 (citing Ex. 2059 ¶ 14). Patent Owner’s expert Dr. Ko critiques Petitioner’s proposed definition as “incomplete, because it lacks any requirement for experience, or access to individuals with experience, in JAK inhibition, deuteration, and AA formulations.” Ex. 2059 ¶ 16. However, neither Dr. Ko nor Patent Owner explains what difference this additional direct experience would have provided to an artisan with the skill level proposed by Petitioner, particularly when Petitioner’s definition includes “experience in treating hair loss disorders,” and for which the record contains evidence that existing JAK inhibitors such as ruxolitinib had been identified as causing reversal of hair loss caused by AA. Ex. 1003, 1043. Accordingly, we adopt Petitioner’s proposed definition as consistent with the level of skill apparent in the cited prior art. In any event, as Patent Owner does not explain why its alternative definition would have any bearing on the outcome of the present case, and as we discern no appreciable difference in the parties’ definitions, we note our findings and conclusions would be the same regardless of which definition were adopted. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “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 11

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

    “C. Claim Construction We construe claims using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100. Therefore, we construe the challenged claims under the framework set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc). Under this framework, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art (“POSA”), at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id. Only those terms that are in controversy need be construed and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We have considered Petitioner’s claim construction proposals (see Pet. 21–23), which are uncontested (see generally Resp., not addressing construction), and find that it is not necessary to expressly construe any claim term for purposes of rendering this Decision.” slip op. at 13

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Applicant-admitted prior artReference not prior artDecided for patent owner

    “Section 102(b)(1) provides two exceptions to § 102(a)(1) for disclosures made within one year of the effective filing date. Specifically, 35 U.S.C. § 102(b)(1) provides that a disclosure made one year or less before the effective filing date of a claimed invention shall not be prior art under 35 U.S.C. § 102(a)(1) with respect to the claimed invention if: (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. 35 U.S.C. § 102(b)(1).” slip op. at 16

  Patent outcomesUS 10,561,659 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,561,659
• Apple, Inc. v. Corephotonics Ltd.No claims unpatentable
  PTAB · Nov 8, 2021 · IPR2020-00906 · APJ John F Horvath · IPR · Final written decision

  Claims 19–22 were not shown unpatentable because Petitioner did not establish that Ogata’s lens could be scaled for Parulski’s camera with a reasonable expectation of success.

  RulingsFinal written decision

  • Expert testimonyDecided for patent owner

    “first embodiment lens and the data entered into the “Lens Editor Data” spreadsheet are noticeable. First, the Abbe number for the third lens element is 42.72 in Ogata’s first embodiment lens and 26.5 (i.e., 38% smaller) in the “Lens Data Editor” spreadsheet. Compare Ex. 1026, 7:46, with Ex. 1021, 36. Second, the data for the fourth and tenth aspherical surfaces are noticeably different. For example, the fourth order term (A4) for the fourth aspherical surface is 0.66 x 10-4 in Ogata’s first embodiment lens and 151.69 x 10-4 (i.e., 0.015) in the “Lens Data Editor” spreadsheet. Compare Ex. 1026, 7:55, with Ex. 1021, 36. Neither Petitioner nor Dr. Sasián explain these discrepancies.” slip op. at 15

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We agree with Patent Owner. The Petition contends that a person of ordinary skill in the art would have known that Ogata’s lens (using glass lens elements) could have been scaled to focus an image onto a 1/2.5” image sensor for use in Parulski’s camera. See Pet. 24–30; Ex. 1021, 36. Petitioner’s reply evidence and argument is not introduced to support that contention but a different contention—that a person of ordinary skill in the art would have known that Ogata’s lens could have been redesigned using aspheric plastic lens elements to focus an image onto a 1/3” image sensor. See n.11, supra. This is a new contention that does not support Petitioner’s 11 We note that Dr. Sasián’s analysis discloses how Kawamura’s lens can be modified by replacing the spherical glass lens elements with aspherical plastic lens elements, moving the aperture stop to the first lens element, changing the F number to 2.8, and reducing the effective focal length to focus an image onto a 1/3” image sensor rather than a 1/2.5” image sensor. See Ex. 1039 ¶¶ 25–30; App’x, 17–18. Dr. Sasián also opines that although this analysis illustrates how Kawamura’s lens could have been modified, a person skilled in the art “would have recognized that Ogata could have been similarly adjusted to yield a miniaturized form-factor.” Id. ¶ 25. because it is a new and untimely contention, we do not consider it further. See Consolidated Trial Practice Guide (Nov. 2019)12 (“Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie case of unpatentability.”); see also Ariosa Diagnostics v. Verinata Heath, Inc., 805 F.3d 1359, 1368 (Fed. Cir. 2015) (“The Board must make judgments about . . . when a Reply contention crosses the line from the responsive to the new.”); Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d at 1359, 1369–70 (Fed. Cir. 2016) (affirming the Board’s rejection of a reply argument presenting an “entirely new rationale to explain why one of skill in the art would have been motivated to combine” prior art references); Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1330–31 (Fed. Cir. 2019) (affirming the Board’s rejection of a reply argument presenting an “entirely new rationale” for why a claim would have been obvious).” slip op. at 18

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

    “first embodiment lens and the data entered into the “Lens Editor Data” spreadsheet are noticeable. First, the Abbe number for the third lens element is 42.72 in Ogata’s first embodiment lens and 26.5 (i.e., 38% smaller) in the “Lens Data Editor” spreadsheet. Compare Ex. 1026, 7:46, with Ex. 1021, 36. Second, the data for the fourth and tenth aspherical surfaces are noticeably different. For example, the fourth order term (A4) for the fourth aspherical surface is 0.66 x 10-4 in Ogata’s first embodiment lens and 151.69 x 10-4 (i.e., 0.015) in the “Lens Data Editor” spreadsheet. Compare Ex. 1026, 7:55, with Ex. 1021, 36. Neither Petitioner nor Dr. Sasián explain these discrepancies.” slip op. at 15

  Patent outcomesUS 10,225,479 not shown unpatentable
  § 103 obviousness
  Patents in suitUS 10,225,479
• Apple, Inc. v. Corephotonics Ltd.No claims unpatentable
  PTAB · Nov 8, 2021 · IPR2020-00905 · APJ John F Horvath · IPR · Final written decision

  Claims 1–16, 18, 23–38, and 40 were not shown unpatentable because the asserted obviousness combinations did not establish a fused image with both Wide perspective and position POV.

  RulingsFinal written decision

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

    “In a dual-aperture camera image plane, as seen by each sub-camera (and respective image sensor), a given object will be shifted and have different perspective (shape). This is referred to as point-of-view (POV). The system output image can have the shape and position of either sub-camera image or the shape or position of a combination thereof. If the output image retains the Wide image shape then it has the Wide perspective POV. If it retains the Wide camera position then it has the Wide position POV. The same applies for Tele images position and perspective. As used in this description, the perspective POV may be of the Wide or Tele sub-cameras, while the position POV may shift continuously between the Wide and Tele sub-cameras. In fused images, it is possible to register Tele image pixels to a matching pixel set within the Wide image pixels, in which case the output image will retain the Wide POV ("Wide fusion"). Ex. 1001, 5:10–26.” slip op. at 10

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

    “We find Petitioner sets forth sufficient reasoning with rational underpinning to combine the teachings of Parulski and Konno. Parulski lenses, but fails to give lens prescription data for the two camera lenses. Konno discloses lens prescription data for a dual-lens camera utilizing two thin lenses. The combination, therefore, is one of familiar elements according to known methods to obtain predictable results or a substitution of one element for another known in the field to obtain a predictable result. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).” slip op. at 17

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

    “We agree with Patent Owner. As we explain in § II.D.1, supra, claims 1 and 23 require generating a fused image having a Wide perspective POV and a Wide position POV. Petitioner’s only argument for how the combination of Parulski and Konno teaches this limitation is Parulski’s teaching of generating a fused image having a Wide position POV, i.e., having the field of view (FOV) of the Wide camera. See Pet. Reply 13 (“Parulski teaches . . . producing an output image that maintains the Wide position POV or the field of view of the Wide camera when the image was captured.”). Petitioner fails to demonstrate how Parulski’s image fusion method would also maintain the Wide perspective POV as required by independent claims 1 and 23. Accordingly, for the reasons discussed above, Petitioner has failed to demonstrate by a preponderance of evidence that claims 1 and 23 are unpatentable as obvious over the combination of Parulski and Konno.” slip op. at 21

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Patent Owner argues that Petitioner and Dr. Durand have failed to demonstrate that Parulski teaches “the ‘fused image with a point of view (POV) of the Wide camera’ limitation” because their “sole argument that Parulski meets this limitation is based on the output [image] having the ‘wide image’s field of view.’” PO Resp. 29 (citing Ex. 1003 ¶ 51). Patent Owner further argues that “[n]othing in Parulski suggests that whatever image data from the tele image that might be ‘fused’ into the output would be modified to have the shapes and positions from the wide image POV” and “nothing in Dr. Durand’s declaration even attempts to establish [that] this admitted during his deposition that he had not provided an opinion about whether Parulski generates a fused image having both a Wide perspective POV and a Wide position POV. See PO Sur-Reply 5 (citing Ex. 2041, 52:25–54:20). We agree with Patent Owner. As we explain in § II.D.1, supra, claims 1 and 23 require generating a fused image having a Wide perspective POV and a Wide position POV. Petitioner’s only argument for how the combination of Parulski and Konno teaches this limitation is Parulski’s teaching of generating a fused image having a Wide position POV, i.e., having the field of view (FOV) of the Wide camera. See Pet. Reply 13 (“Parulski teaches . . . producing an output image that maintains the Wide position POV or the field of view of the Wide camera when the image was captured.”). Petitioner fails to demonstrate how Parulski’s image fusion method would also maintain the Wide perspective POV as required by independent claims 1 and 23.” slip op. at 20

  Patent outcomesUS 10,225,479 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 10,225,479
• ROKU, Inc. v. Universal Electronics, Inc.No claims unpatentable
  PTAB · Apr 13, 2021 · IPR2019-01615 · APJ Sharon Fenick · IPR · Final written decision

  Claims 1, 3, 5, and 7 were not shown unpatentable because the evidence did not establish that Chardon’s command-code database teaches the claimed listing of communication methods.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner argues that one of ordinary skill in the art would have had general knowledge of home theater systems, control of devices within the home theater systems, and remote control devices as of October 28, 2011. Further, a POSA would have had: (1) at least a bachelor’s degree in an electrical engineering, computer engineering, or equivalent coursework, and (2) at least one year of experience researching or developing structure and operating principles of common digital content reproduction and related appliances, contemporary television and home theater standards, and specifications of consumer digital reproducing devices of the time. Pet. 13. Patent Owner proposes a different standard: [A person of ordinary skill in the art] would have had a bachelor’s degree which involved software design and development coursework, for example, electrical engineering, computer engineering, computer science, cognitive science, industrial engineering, information systems, information studies, or a similar degree, and at least one year of work experience in software programming, development, or design of consumer applications. Additional education might substitute for some of the experience, and substantial experience might substitute for some of the educational background. PO Resp. 4–5 (internal citations omitted). The ’853 patent specifically relates to remote control devices, so we adopt Petitioner’s standard that includes general knowledge consistent with the field of the invention, and, additionally, is consistent with the prior art presented. See Ex. 1001, 1:63– 2:3; Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9

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

    “Petitioner proposes only one claim construction, for limitation [1.4], which specifies that the first and second communication methods are “for use in controlling each of at least a first functional operation and a second functional operation of the intended target appliance.” Pet. 14–17. In our Decision on Institution, we found that no specific construction was necessary. Dec. 17. Post-institution, the parties’ arguments did not involve the construction of this term, and no express construction is necessary for us to reach our conclusion. See PO Resp. 10 (Patent Owner stating that no construction is required). We determine that no specific construction is required to resolve the controversy before us, and thus decline to construe this limitation. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 11

  • BurdenNot shown unpatentable

    “by a preponderance of the evidence that Chardon teaches or suggests a database (the “listing” of claim 1) that is “comprised of at least a first communication method and a second communication method different than the first communication method,” which methods are “used to transmit to the intended target appliance a command for controlling” a functional operation of a target appliance, as required by claim 1. We find that Petitioner has not sufficiently adduced that a database “comprised of” CEC and IR command codes would teach or suggest claim 1’s listing.” slip op. at 20

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

    “by a preponderance of the evidence that Chardon teaches or suggests a database (the “listing” of claim 1) that is “comprised of at least a first communication method and a second communication method different than the first communication method,” which methods are “used to transmit to the intended target appliance a command for controlling” a functional operation of a target appliance, as required by claim 1. We find that Petitioner has not sufficiently adduced that a database “comprised of” CEC and IR command codes would teach or suggest claim 1’s listing.” slip op. at 20

  Patent outcomesUS 9,716,853 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,716,853

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.