- Alivecor, Inc. v. Apple Inc.Some claims unpatentablePTAB · Jan 7, 2025 · IPR2023-00949 · APJ Scott A Daniels · IPR · Final written decision
Claims 11–14 and 16–20 are unpatentable over Kim; claim 15 was not shown unpatentable over Chang.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s asserted level of ordinary skill in the art is essentially the same as Petitioner’s, for example requiring a bachelor’s degree in science or engineering and “at least two years of relevant work experience with capture and processing of data or information, including but not limited to physiological information.” Id.; Pet. 9. In view of the similarity, our record now before us, and as we did in our Institution Decision, we rely on Petitioner’s proposed level of ordinary skill in the art as it is essentially the same as that proposed by Patent Owner. Petitioner’s asserted level of ordinary skill in the art is consistent with our review and understanding of the technology and descriptions in the ’619 patent and the asserted prior art references. Okajima, 261 F.3d at 1355.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“C. Claim Construction We interpret a claim “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(b) (2020). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Furthermore, “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither Patent Owner nor Petitioner indicate that any claim terms require construction. See generally Petition; PO Resp. For purposes of this Decision where no claim terms are in dispute, we need not explicitly construe any claim terms.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“What these cases and examples clearly articulate, is that whether there is sufficient description in an anticipation reference for linking different disclosures, elements, and embodiments, is particularly case and fact dependent. Moreover, a finding of anticipation resting upon a reference’s disclosures of elements in different embodiments turns on whether an ordinarily skilled artisan would understand that the reference suggests arranging the elements of the embodiments to one another in the same way as the challenged claims. For the reasons that follow, we determine that there is sufficient description and teaching in Kim such that the “combined button” disclosed by Kim, for example in Figure 10(b), can be the same “combined button” as discussed in the embodiment of Figure 18.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“As to Patent Owner’s first and second arguments, as we discussed in detail above with respect to anticipation, we find that there is sufficient evidence in Kim itself of contextual and even express links between the various combined button embodiments and Figure 18. Section II.D.2.b)(1)– (4). We have already determined “that one of ordinary skill in the art would understand Kim to disclose the ‘combined button’ structure and function that could be implemented on the face or sidewall of a device.” Id. We likewise determine, based on the same evidence, that a person of ordinary skill in the art would have understood Kim to suggest that the combined button structure and function, for example in the embodiment of Figure 10(b), could be implemented in an opening on the face or sidewall of a device. Obviousness does not require an instruction manual on how to physically incorporate or combine the disclosures of two embodiments in a reference. As KSR informs us, “in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” KSR, 550 U.S. at 420. Moreover, in this case we have only one prior art patent, Kim, so at least the pieces of the puzzle are all in the same box. The persuasive testimony of Dr. Berger that “a person of ordinary skill in the art would have been familiar with electronic devices with sealed and/or insulated button assemblies, and would understand that those assemblies were not limited to the front face of a device,” is unrebutted in this case. Ex. 1003 ¶ 110. “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. Given the background knowledge of a person of ordinary skill in the art in conjunction with the motivation and teachings in Kim itself for placing sufficient motivation to support the combination of Kim’s Figure 10(b) embodiment with the sidewall placement of the combined button taught in Figure 18 for obviousness purposes. It is well-settled that a single prior art obviousness reference itself can provide motivation for the combination. See General Elec. Co. v. Raytheon Techs. Corp., 983 F.3d 1334, 1352 (Fed. Cir. 2020) (Reversing the Board’s finding of nonobviousness over a single prior art reference, the Court explained that “the Board’s approach would require a motivation to combine each element of the claim—even those present together in a reference. This analysis unduly dissects prior art references into collections of individual elements, requiring a party showing obviousness to re-do the work already done in the prior art reference.”). Patent Owner’s third argument is unavailing because although Dr. Anthony testifies that “implementing the fingerprint sensor assembly of Kim’s Figure 10 embodiment in the ‘lateral surface’ of Kim’s Figure 18 embodiment would have complicated the manufacturing process for the resulting mobile device,” Dr. Anthony does not provide testimony or evidence that implementing the combined button on the sidewall would have been difficult or beyond the level of ordinary skill in the art. Ex. 2009 ¶ 73. We credit Dr. Berger who explains persuasively that “[p]rior to the ’619 patent’s earliest alleged priority date of June 19, 2017, a person of ordinary skill in the art would have known that a mobile electronic device could include one or more button assemblies in a sidewall.” Ex. 1003 ¶ 47 (citing Ex. 1013, 4:40, 19:42–20:4, Figs. 13B, 17, 19A, 19B). It is well-settled that a person of ordinary skill can use his or her ordinary skill, creativity, and common sense to make the necessary adjustments and further modifications to result in a properly functioning device. See KSR, 550 U.S. at 418 (“the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”).” slip op. at 43
Patent outcomesUS 10,866,619 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,866,619 - Alivecor, Inc. v. Apple Inc.Some claims unpatentablePTAB · Dec 23, 2024 · IPR2023-00950 · APJ Josiah C Cocks · IPR · Final written decision
Claims 1–14 were not shown unpatentable; claims 15–22 were shown unpatentable over Markel. The revised contingent motion to amend was dismissed as moot.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“In carefully and faithfully wrangling the parties’ views and explanation as to the meaning of limitation [1.c.iii], we conclude that Petitioner’s “correct interpretation” of that limitation is that a first pad is recognized as a distinct structure or component from a first portion of an enclosure, and that the pad is positioned underneath that first portion in a manner such that the pad is concealed from a user. We adopt that interpretation. We determine that it is unnecessary to discuss an express construction for any other term to resolve this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s proposed level of ordinary skill in the art is somewhat broader in both education and proposed work experience. Patent Owner’s proposed work experience is somewhat vague and potentially outside the scope of the claimed invention. For example, the requirement that the person of ordinary skill in the art have experience with the “capture and processing of data or information, including but not limited to physiological information,” would seemingly encompass data processing areas that do not relate to the scope of the claimed invention. We adopt Petitioner’s level of the level of ordinary skill in art because it is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). Nevertheless, our analysis and the end result are the same under either proposed definition.” slip op. at 13
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Patent Owner makes a more persuasive case as to what a person of ordinary skill in the art reasonably would have understood from Markel’s disclosure. In particular, we agree with Patent Owner that the record before us readily conveys that a skilled artisan would have followed Markel’s practice of forming or molding electrodes from conductive plastic rather than locating a separate electrode component underneath a conductive plaster layer. See, e.g., PO Resp. 30–31 (“[a] POSITA would find nothing in cited portions of Markel to inform or encourage placement of an electrode underneath an exterior layer.”). Indeed, as Patent Owner articulates, Petitioner “fails to provide any reasoning as to why a POSITA would have found Markel’s method of concealment to be deficient, or why a POSITA would have been motivated in light of Markel’s manner of concealment to nevertheless place an electrode underneath the exterior portion of the device.” Id. To that end, we credit Dr. Kenny’s supporting testimony as consistent with Markel’s express teachings. See, e.g., Ex. 2001 ¶¶ 77–83; Ex. 2004 ¶¶ 81–88. We credit that testimony over the countervailing testimony of Petitioner’s declarant, Dr. Berger (see, e.g., Ex. 1003 ¶¶ 122, 135–139), as we agree with Patent Owner that Dr. Berger’s testimony “is not supported by Markel’s actual disclosures.” PO Resp. 31.” slip op. at 33
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable
“Petitioner does not appear to disagree that Markel, itself, does not convey that an electrode, or any structure identifiable as a “pad,” is positioned underneath any surface of any enclosure. Rather, Petitioner’s theory of unpatentability is premised on modification of Markel to so position such a pad. Although seemingly acknowledging that Markel contemplates a concealment technique involving molding an electrode into an exterior surface, Petitioner extrapolates from that disclosure that a skilled artisan would be motivated to try an alternative means of concealing an electrode pad by placing the pad underneath an outer layer or portion, i.e., “audio output portion 610.” See Pet. 20 (citing Ex. 1003 ¶ 135). Neither Petitioner, nor Dr. Kenny, however, meaningfully explains why a skilled artisan would have deviated from Markel’s express teachings of concealing an electrode via molding techniques to then arrive at an entirely different concealment approach of placing an electrode pad underneath the audio output portion. Petitioner’s modification proposal in that regard appears borne of hindsight bias based on the disclosure of the ’257 patent rather than any dutiful consideration of what Markel’s actual teachings would have conveyed to a skilled artisan. See Ex. 2004 ¶ 84 (Dr. Kenny explaining why Petitioner’s proposed modification to Markel to hide the electrode underneath a plastic conductive layer was based on improper hindsight). Such hindsight bias is impermissible. See, e.g., Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017) (“[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.”). Patent Owner makes a more persuasive case as to what a person of ordinary skill in the art reasonably would have understood from Markel’s disclosure. In particular, we agree with Patent Owner that the record before us readily conveys that a skilled artisan would have followed Markel’s practice of forming or molding electrodes from conductive plastic rather than locating a separate electrode component underneath a conductive plaster layer. See, e.g., PO Resp. 30–31 (“[a] POSITA would find nothing in cited portions of Markel to inform or encourage placement of an electrode underneath an exterior layer.”). Indeed, as Patent Owner articulates, Petitioner “fails to provide any reasoning as to why a POSITA would have found Markel’s method of concealment to be deficient, or why a POSITA would have been motivated in light of Markel’s manner of concealment to nevertheless place an electrode underneath the exterior portion of the device.” Id. To that end, we credit Dr. Kenny’s supporting testimony as consistent with Markel’s express teachings. See, e.g., Ex. 2001 ¶¶ 77–83; Ex. 2004 ¶¶ 81–88. We credit that testimony over the countervailing testimony of Petitioner’s declarant, Dr. Berger (see, e.g., Ex. 1003 ¶¶ 122, 135–139), as we agree with Patent Owner that Dr. Berger’s testimony “is not supported by Markel’s actual disclosures.” PO Resp. 31.” slip op. at 32
Patent outcomesUS 10,076,257 mixedClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,076,257 - Microchip Technology Inc. v. HD Silicon Solutions LLCSome claims unpatentablePTAB · Nov 7, 2022 · IPR2021-00752 · APJ Frances L Ippolito · IPR · Final written decision
Claims 1–7 and 9–17 are unpatentable as obvious; claim 8 was not shown unpatentable because the petitioner did not sufficiently explain why a skilled artisan would combine Trivedi and Yang.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 5. Patent Owner does not dispute this level of skill. See generally PO Resp. Petitioner’s proposal is reasonable and consistent with the prior art presented. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). We accordingly adopt Petitioner’s proposal, which is supported by Dr. Lee’s testimony. See Ex. 1002 ¶ 32.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“d) “the first film and the second film are deposited insitu.” First, we observe the meaning of “in-situ” is not dispositive. Patent Owner contends the term means deposited in the same chamber, or in chambers that are connected through a central chamber. PO Resp. 36 (citing Ex. 2009 ¶ 50). Dr. Lee agrees. Ex. 2010, 89:13–23; see also Tr. 20:8–12 concerned, I don’t think the parties are that far apart in our understanding in that as long as, you know, the reference is disclosing the ability for a wafer to be processed in the same chamber, that would satisfy in-situ.”).” slip op. at 31
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“disclosure is inapplicable to local interconnect fabrication. PO Resp. 34–36. Patent Owner has not argued that Joo is non-analogous art, nor has Patent Owner addressed either test for non-analogous art. See generally PO Resp. Specifically, Patent Owner has not addressed whether Joo is within the same field of endeavor as the claimed invention or whether Joo is otherwise reasonably pertinent to the problem faced by the inventor. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Rather, Patent Owner contends that gate electrodes are different from local interconnects. See PO Resp. 7–11, 33–36. In any event, we agree with Petitioner that Joo is in the same field of endeavor as the ’033 patent. In the Background, the ’033 patent states that present invention relates to “integrated circuits, and more particularly to integrated circuit fabrication processes and structures.” Ex. 1001, 1:5–8. Similarly, Joo is directed to “the field of semiconductor manufacturing and more specifically to a method and apparatus for the selective oxidation of a composite silicon/metal film.” Ex. 1005, 1:5–10. Moreover, Joo states that its described processes and “composite film need not necessarily be used to form a gate-electrode but can be used to form other device features such as but not limited to capacitor electrodes and interconnects.” Ex. 1005, 5:41–” slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“After consideration of the contentions and the evidence of record, we find that Petitioner has shown that the combination of Trivedi and Joo teaches each recitation of claim 3. Also, we are persuaded that Petitioner has offered articulated reasoning with a rational underpinning as to why one of ordinary skill in the art would have combined the teachings of Trivedi and Joo in the manner recited in claim 3. Based on the complete record now before us, we determine that Petitioner has proved, by a preponderance of the evidence, that claim 3 is unpatentable under 35 U.S.C. § 103(a) as obvious over the combined teachings of Trivedi and Joo.” slip op. at 39
Patent outcomesUS 6,774,033 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,774,033 - Shenzhen Kean Silicone Product Co., Ltd. v. Pkoh Nyc, LLCSome claims unpatentablePTAB · Dec 3, 2018 · IPR2017-01327 · APJ Robert L Kinder · IPR · Final written decision
Claims 1–7, 10–13, 20–22, 24, 26, 28–32, and 35–38 are unpatentable as obvious; claim 14 was not shown unpatentable over Cho.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Person of Ordinary Skill in the Art Petitioner’s expert, Mr. Goldman, proposes that a person of ordinary skill in the bottle/container field as of the time of the filing of the application that became the ’036 patent “would have a bachelor’s degree (or equivalent) in mechanical engineering and at least one or two years’ experience developing container technology.” Ex. 1014 ¶ 4. Patent Owner does not dispute Petitioner’s proposal, and based on the final record, we adopt it for purposes of this Decision.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededDecided for petitioner
“The Specification of the ’036 patent describes “[t]he elastomeric material is . . . of an appropriate durometer, such as 40 Shore A, to make the squeeze bulb 200 substantially deformable yet resilient,” and the elastomeric material is preferably silicone. Ex. 1001, 2:54–63. Only the claimed wall portion of the receptacle is claimed to be “resiliently deformable.” Id. at 5:9–10. Nothing in the claim, however, precludes or requires any other portion of the receptacle (comprised of elastomeric material) from also being resiliently deformable. Id. at 4:47–48. Notably, the receptacle is claimed to be “flexible and resilient.” Id. Although the “flexible and resilient” receptacle and its wall being “resiliently deformable” are not necessarily identical, this distinction appears to be minor considering the written description of the ’036 patent. Based on the foregoing, we give each of these claim terms their plain and ordinary meaning as understood by a person or ordinary skill in the art. The surrounding claim language for each claim limitation focuses the scope of these terms such that any interpretation we could provide would not be as helpful in understanding the terms as the surrounding claim language. We determine that no terms require express construction for the purposes of this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
- Expert testimonyPetitioner expert creditedPatent owner expert discountedOther
“6 In our decision, we give little weight to Petitioner’s evidence of “scores of popular baby bottles currently on the market,” because the design of these new bottles does not indicate the state of the art at the time the ’036 patent was filed. Further, Petitioner has failed to provide any corroborating testimony related to these new bottles—recent advertisements do not convince us of what a person of skill in the art would have considered at the time of filing. See Pet. Reply 11 (emphasis added) (citing Exs. 1022, 1023, 1024). We likewise give little weight to Petitioner’s uncorroborated article (Ex. 1026) from Wikipedia concerning “Baby bottle.” The record before us does not establish the origin and scientific basis for this evidence, and thus, we weigh Mr. Goldman’s testimony (Ex. 1021 ¶ 13) based on this evidence in a similar manner. See 37 C.F.R. § 42.65(a); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,763 (“Affidavits expressing an opinion of an expert must disclose the underlying facts or data.”). This sentence, standing alone, supports Mr. Fletcher’s conclusion that “an elastomeric, flexible silicone” could be used in the body of Cho’s bottle. See Ex. 1014 ¶ 30. Further, we find persuasive Petitioner’s arguments, supported by the testimony of Mr. Fletcher, that “silicone is primarily known for its elastic properties, and has been widely used in medical applications, including implants and storage containers, due to its chemical inertness, high heat resistance, flexibility and resistance for at least 60 years.” Pet. 30 (citing Ex. 1014 ¶ 34). Petitioner also supports its argument as to the suitability of silicone in consumer products, including in baby bottles, with a 1991 New York Times article that explains the elastomeric properties of silicone. Pet. 12; Ex. 1018, 2 (describing “rubbery silicone”), id. at 3 (“When baby gets a bottle these days, the nipple is a rubbery version of silicone.”). The fact that silicone could also possess other properties, or hardness, does not dissuade us from the determination that Cho, as a whole, teaches using a soft, resilient silicone in the body of the bottle.” slip op. at 20
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“At the outset, Mueller is analogous art and Patent Owner’s arguments to the contrary flip the analysis from focusing on the problem faced by the inventor of the ’036 patent to the “specific problem(s) found in Cho’s baby bottle.” First, Cho and Mueller are in the same field of endeavor as the claimed invention—dispensing containers—as admitted by Patent Owner. See PO Resp. 36. We need not address the second portion of the analogous art test, which focuses on whether the prior art “is reasonably pertinent to the problem with which the inventor was concerned.” In re Kahn, 441 F.3d 977, 986–87 (Fed. Cir. 2006). We do note, however, that the parties have both misapplied this second portion of the analysis. This analysis is focused on the problem faced by the inventor of the ’036 patent, not necessarily the problems addressed in the prior art references. Because neither party sufficiently addresses the problems faced by the inventor of the ’036 patent, and because Mueller and Cho are in the same field of endeavor as the claimed invention, we need not address the second portion of the analogous art test.” slip op. at 39
Patent outcomesUS 7,959,036 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,959,036
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.