- Infobionic, Inc. v. Braemar Manufacturing, LLCAll claims unpatentablePTAB · Dec 29, 2016 · IPR2015-01679 · APJ Scott C Moore · IPR · Final written decision
Claims 1, 2, 4, 6, 7, 10, 11, 13–15, and 17 are anticipated by Sellers; claims 3, 5, 8, 9, 12, 16, and 20–22 are obvious over Sellers and Stutman; claims 18–19 are obvious over …
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for petitioner
“location.” See PO Resp. 21–22; Reply 2. On this record, we determine that the claim term “central monitoring device” is not further limited to a device that performs monitoring “during a monitoring session” such that it is able to “respond to patient status . . . when it detects evidence of certain physiologic conditions as they occur.” See PO Resp. 21–22. The Specification uses the term “central monitoring device” in an open-ended manner, and Patent Owner does not identify any lexicographic definition or disclaimer that would limit the claim term “central monitoring device” in the manner it proposes. See PO Resp. 20–22; Tr. 38:1–17. Though Patent Owner cites one dictionary that defines “monitoring” as “constantly checking on a patient’s condition” (Ex. 2021, 930), this definition is overly narrow because the Specification makes clear that monitoring may be performed on a periodic basis. See, e.g., Ex. 1001, 3:2–31, 8:57–64. Moreover, Patent Owner’s other dictionary definition (Ex. 2020, 752) does not reference a patient, or require detecting “physiologic conditions as they occur.” Dr. Fernald’s testimony regarding this claim term (Ex. 2003 ¶¶ 39– 41) is not persuasive because the portions of the Specification he cites do not limit the claim term “central monitoring device” in the manner Patent Owner proposes (see Ex. 2003 ¶ 39 (citing Ex. 1001, 3:10–16, 6:37–42, 7:13–20, 7:52–59, 8:23–38); Tr. 38:1–17), and because Dr. Fernald does not adequately account for the dictionary evidence indicating that the claim term “monitoring” does not require constantly observing a patient’s status (see Ex. 2020, 752). We find persuasive Dr. Stone’s testimony that one of ordinary skill would have understood the portions of the Specification cited by Patent Owner and Dr. Fernald to be non-limiting examples. Ex. 1011 ¶¶ 19–32. For the foregoing reasons, on this record, and under the applicable broadest reasonable interpretation standard, we construe “central monitoring device” as “a device that watches, keeps track of, or checks from a central location.” 2.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“On this record, and under the applicable broadest reasonable interpretation standard, we determine that the claim term “in communication with” encompasses indirect communications (e.g., communication by way of an intermediate component). We further determine that a processor need not generate a message, or respond to a message, in order to be “in communication with” a separate component. The ’901 Patent Specification uses the term “in communication with” in a broad, open-ended manner. See, e.g., Ex. 1001, 2:13–23, 2:38–44. In addition, Patent Owner does not cite any persuasive intrinsic or extrinsic evidence that a person of ordinary skill in the art would have read the claim term “in communication with” to exclude embodiments in which a processor merely receives information. See PO Resp. 40–43. Nor does Patent Owner cite any persuasive intrinsic or extrinsic evidence that the claim term “in communication with” excludes communication between a processor and a component when the processor is acting as an intermediary between that component and some other component. See id. In addition, Dr. Fernald fails to sufficiently support his conclusion that the claim term “in communication with” excludes such forms of communication. See Ex. 2003 ¶¶ 99–103. 4.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“On this record, we adopt Petitioner’s formulation concerning the level of ordinary skill in the art because this formulation more accurately describes the subject matter to which the ’901 Patent pertains. Patent Owner’s formulation is unduly narrow because subject matter of the ’901 Patent is not limited to “ECG telemetry devices” or other “remote monitoring and telemetry devices.” The parties do not dispute that Dr. Stone and Dr. Fernald are both qualified to testify about the perspective of one having ordinary skill in the art, regardless of which formulation we adopt. Tr. 24:22–25:3, 62:6–11. The parties also agree that the issues in this case do not turn on the differences between Petitioner’s and Patent Owner’s proposed formulations regarding the level of ordinary skill in the art. Id. at 24:13–19, 62:12–21. On this record, we find that both Dr. Stone and Dr. Fernald are qualified to offer expert opinions in this case. The factual findings and legal conclusions set forth below would not have differed had we adopted Patent Owner’s formulation regarding the level of ordinary skill in the art. 3.” slip op. at 14
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Dr. Fernald’s testimony regarding this claim term (Ex. 2003 ¶¶ 39– 41) is not persuasive because the portions of the Specification he cites do not limit the claim term “central monitoring device” in the manner Patent Owner proposes (see Ex. 2003 ¶ 39 (citing Ex. 1001, 3:10–16, 6:37–42, 7:13–20, 7:52–59, 8:23–38); Tr. 38:1–17), and because Dr. Fernald does not adequately account for the dictionary evidence indicating that the claim term “monitoring” does not require constantly observing a patient’s status (see Ex. 2020, 752). We find persuasive Dr. Stone’s testimony that one of ordinary skill would have understood the portions of the Specification cited by Patent Owner and Dr. Fernald to be non-limiting examples. Ex. 1011 ¶¶ 19–32.” slip op. at 9
Patent outcomesUS 6,225,901 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,225,901 - Infobionic, Inc. v. Braemar Manufacturing, LLCSome claims unpatentablePTAB · Dec 29, 2016 · IPR2015-01688 · APJ Scott C Moore · IPR · Final written decision
Claims 1, 2, 4, 6, 7, 11–16, and 19–23 are anticipated by Sellers; claims 3, 5, 8, 9, 17, and 18 are obvious over Sellers and Stutman; claim 10 was not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“On this record, we adopt Petitioner’s formulation concerning the level of ordinary skill in the art because this formulation more accurately describes the subject matter to which the ’403 Patent pertains. Patent Owner’s formulation is unduly narrow because subject matter of the ’403 Patent is not limited to “ECG telemetry devices” or other “remote monitoring and telemetry devices.” The parties do not dispute that Dr. Stone and Dr. Fernald are both qualified to testify about the perspective of one having ordinary skill in the art, regardless of which formulation we adopt. Tr. 24:22–25:3, 62:6–11. The parties also agree that the issues in this case do not turn on the differences between Petitioner’s and Patent Owner’s proposed formulations regarding the level of ordinary skill in the art. Id. at 24:13–19, 62:12–21. On this record, we find that both Dr. Stone and Dr. Fernald are qualified to offer expert opinions in this case. The factual findings and legal conclusions set forth below would not have differed had we adopted Patent Owner’s formulation regarding the level of ordinary skill in the art.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for petitioner
“The parties agree that a central monitoring device/service is a device/service that “watch[es], keep[s] track of, or check[s]” on something “from a central location.” See PO Resp. 21; Reply 2. On this record, we determine that the claim term central monitoring device/service is not further limited to a device/service that performs monitoring “during a monitoring session” such that it is able to “respond to patient status . . . when it detects evidence of certain physiologic conditions as they occur.” See PO Resp. 20– 22. The Specification uses the term “central monitoring device” in an openended manner, and Patent Owner does not identify any lexicographic definition or disclaimer that would limit this claim term in the manner it proposes. See PO Resp. 19–22; Tr. 38:1–17. The term “central monitoring service” does not appear in the Specification. Though Patent Owner cites a dictionary that defines “monitoring” as “constant checking on a patient’s condition” (Ex. 2021, 930), this definition is overly narrow because the Specification makes clear monitoring may be performed on a periodic basis. See, e.g., Ex. 1001, 3:6–35, 8:63–9:2. Moreover, Patent Owner’s other dictionary definition (Ex. 2020, 752) does not reference a patient, or require detecting “physiologic conditions as they occur.” Dr. Fernald’s testimony regarding this claim term (Ex. 2003 ¶¶ 39– 41) is not persuasive because the portions of the Specification he cites do not limit the term central monitoring device/service in the manner Patent Owner proposes (see Ex. 2003 ¶ 39 (citing Ex. 1001, 3:14–20, 6:42–47, 7:17–25, 7:57–64, 8:28–42); Tr. 38:1–17), and because Dr. Fernald does not adequately account for the dictionary evidence indicating that the claim term “monitoring” does not require constantly observing a patient’s status (see Ex. 2020, 752). We find persuasive Dr. Stone’s testimony that one of ordinary skill would have understood the portions of the Specification cited by Patent Owner and Dr. Fernald to be non-limiting examples. Ex. 1011 ¶¶ 21–34. For the foregoing reasons, on this record, and under the applicable broadest reasonable interpretation standard, we construe central monitoring device/service as a device or service “that watches, keeps track of, or checks from a central location.” 2.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“On this record, and under the applicable broadest reasonable interpretation standard, we determine that the claim term “in communication with” encompasses indirect communications (e.g., communication by way of an intermediate component). We further determine that a processor need not generate a message, or respond to a message, in order to be “in communication with” a separate component. The ’403 Patent Specification uses the term “in communication with” in a broad, open-ended manner. See, e.g., Ex. 1001, 2:17–27, 2:42–48. In addition, Patent Owner does not cite any persuasive intrinsic or extrinsic evidence that a person of ordinary skill in the art would have read the claim term “in communication with” to exclude embodiments in which a processor merely receives information. See PO Resp. 40–44. Nor does Patent Owner cite any persuasive intrinsic or extrinsic evidence that the claim term “in communication with” excludes communication between a processor and a component when the processor is acting as an intermediary between that component and some other component. See id. In addition, Dr. Fernald fails to sufficiently support his conclusion that the claim term “in communication with” excludes such forms of communication. See Ex. 2003 ¶¶ 99–103. 4.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Based on the arguments and evidence presented in the Petition and having considered the arguments and evidence presented by both parties during the trial, we are persuaded that Petitioner has established by a preponderance of the evidence that claims 1, 2, 4, 6, 7, 11–16, and 19–23 are anticipated by Sellers. 4.” slip op. at 26
Patent outcomesUS 6,940,403 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 6,940,403 - Infobionic, Inc. v. Braemar Manufacturing, LLCInstitution deniedPTAB · Dec 23, 2016 · IPR2016-01237 · APJ Ken B Barrett · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–44 would have been obvious over Baker, Xu, and Hatke.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review of U.S. Patent No. 7,212,850 B2 (“the ’850 patent”). Paper 2 (“Pet.”). The Petition challenges the patentability of claims 1–44 of the ’850 patent on the grounds of obviousness under 35 U.S.C. § 103. Braemar Manufacturing, LLC (Patent Owner) filed a Preliminary Response to the Petition. Paper 7 (“Prelim. Resp.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the information presented in the Petition, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any of the claims challenged in the Petition. Accordingly, we do not authorize an inter partes review to be instituted as to any challenged claim of the ’850 patent.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“A claim is unpatentable under 35 U.S.C. § 103(a) if the differences 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, 406 (2007). Further, a patent claim composed of several elements is not proved obvious merely by demonstrating that each of its elements was known, independently, in the prior art. Id. at 418. Additionally, we determine Petitioner—by, inter alia, ambiguously referring to disclosures in multiple references individually and in combination—has failed to explain adequately how it is proposing to combine or modify the references’ teachings to arrive at the claimed subject matter of the forty-four challenged claims. See, e.g., Pet. 29 (“Baker or Xu alone, as well as in combination, disclose the broader claim feature and the narrower feature in claims 35 and 41.”) For these reasons, we determine Petitioner has not demonstrated there is a reasonable likelihood of establishing the unpatentability of the challenged claims.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“display of Hatke’s Figure 6 is “strikingly similar” to that of Figures 2 and 4 of the ’850 patent, with Hatke’s “detected events on top of the trend data instead of below it.” Pet. 43–44. We determine that Petitioner’s argument is insufficient because it primarily relies on the purported similarity in appearance of the figures and fails to articulate sufficiently how the prior art suggests the claim limitation. We also agree with Patent Owner that this use of the ’850 patent hints at hindsight. See Prelim. Resp. 31 (“Aside from a desire to recreate Figure 2 of the ’850 patent, Petitioner fails to explain why the skilled person would have wanted to do this.”). Additionally, we disagree with Petitioner’s assertion that Hatke’s figure is “strikingly similar” to that of the ’850 patent. At most, Hatke’s oxyhemoglobin saturation data has an I-beam shape like that of the ’850 patent’s heart rate. However, Hatke’s histogram showing the quantity of apnea events does not have the appearance of AF burden. Rather, Petitioner is forced to look to a separate figure in Hatke, Figure 7, to find what Petitioner calls “blocks” similar to those of the ’850 patent. Id. at 45–46. Petitioner then proposes modifying Hatke’s Figure 6 by “dumbing [it] down,” apparently proposing to convert the quantities of apnea events to blocks depicting apnea event duration, reasoning that drawing a line for time span was a well-known and intuitive technique to depict time span. Id. at 46; see also id. at 49 (Petitioner impliedly arguing that displaying AF burden merely is drawing AF event time spans as a line). We do not find this persuasive because the fact that one could depict duration as a line does not explain adequately why one would modify Figure 6, even in the context of apnea events. Further, even were we to accept that it first would have been obvious to modify a display related to sleep apnea to arrive at Petitioner’s proposed modified Figure 6, Petitioner fails to explain persuasively why one would have utilized that proposed modified display—which would show oxyhemoglobin saturation and respiratory effort—as the format to display heart rate and AF burden. Mere similarity of appearance—particularly assuming, as we must, that one of ordinary skill lacks the knowledge of the figures of the ’850 patent—does not point towards an eventual conclusion of obviousness of the claimed subject matter.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightTeaching away not foundNot shown unpatentable
“display of Hatke’s Figure 6 is “strikingly similar” to that of Figures 2 and 4 of the ’850 patent, with Hatke’s “detected events on top of the trend data instead of below it.” Pet. 43–44. We determine that Petitioner’s argument is insufficient because it primarily relies on the purported similarity in appearance of the figures and fails to articulate sufficiently how the prior art suggests the claim limitation. We also agree with Patent Owner that this use of the ’850 patent hints at hindsight. See Prelim. Resp. 31 (“Aside from a desire to recreate Figure 2 of the ’850 patent, Petitioner fails to explain why the skilled person would have wanted to do this.”). Additionally, we disagree with Petitioner’s assertion that Hatke’s figure is “strikingly similar” to that of the ’850 patent. At most, Hatke’s oxyhemoglobin saturation data has an I-beam shape like that of the ’850 patent’s heart rate. However, Hatke’s histogram showing the quantity of apnea events does not have the appearance of AF burden. Rather, Petitioner is forced to look to a separate figure in Hatke, Figure 7, to find what Petitioner calls “blocks” similar to those of the ’850 patent. Id. at 45–46. Petitioner then proposes modifying Hatke’s Figure 6 by “dumbing [it] down,” apparently proposing to convert the quantities of apnea events to blocks depicting apnea event duration, reasoning that drawing a line for time span was a well-known and intuitive technique to depict time span. Id. at 46; see also id. at 49 (Petitioner impliedly arguing that displaying AF burden merely is drawing AF event time spans as a line). We do not find this persuasive because the fact that one could depict duration as a line does not explain adequately why one would modify Figure 6, even in the context of apnea events. Further, even were we to accept that it first would have been obvious to modify a display related to sleep apnea to arrive at Petitioner’s proposed modified Figure 6, Petitioner fails to explain persuasively why one would have utilized that proposed modified display—which would show oxyhemoglobin saturation and respiratory effort—as the format to display heart rate and AF burden. Mere similarity of appearance—particularly assuming, as we must, that one of ordinary skill lacks the knowledge of the figures of the ’850 patent—does not point towards an eventual conclusion of obviousness of the claimed subject matter.” slip op. at 13
§ 103 obviousnesscites KSRPatents in suitUS 7,212,850 - Infobionic, Inc. v. Braemar Manufacturing, LLCInstitution deniedPTAB · Dec 23, 2016 · IPR2016-01236 · APJ Ken B Barrett · IPR · Institution
The Board denied institution on all challenged claims 1–28 because Petitioner did not show a reasonable likelihood that the claims were obvious over Baker, Xu, and Hatke.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“limitation would have been obvious in view of the combination of Baker, Xu, and Hatke.”); id. at 26 (“Baker or Xu alone, as well as in combination, disclose the first claim limitation of independent claim 1 and 12.”). A claim is unpatentable under 35 U.S.C. § 103(a) if the differences 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, 406 (2007). Further, a patent claim composed of several elements is not proved obvious merely by demonstrating that each of its elements was known, independently, in the prior art. Id. at 418. Petitioner’s discussion of the “subset” feature is an example of a flawed analysis focused on individual elements rather than an ordered whole. Petitioner’s rationale for the combining of Baker and Xu is that Xu “provid[es] an efficient and accurate AF detection algorithm” (Pet. 24) and “because [Xu’s algorithm] has the desirable characteristics of rapidly and accurately detecting AF events with robust anti-noise performance and requires a short amount of computing time” (id. at 31). Although it is not clear as to how Petitioner proposes to modify Baker by Xu, it appears that Petitioner may be proposing to substitute that efficient, rapid, and accurate algorithm into Baker’s system. Xu’s algorithm is efficient and accurate when it is “ready to use.” See Pet. 21. According to Petitioner (see id.), human assessment ceases before the algorithm becomes “ready to use” because human assessment is used only to “train up” the algorithm. Accordingly, the use of Xu’s system, after having been trained up and ready to use, would not involve human assessment of any subset of events identified by the system. Thus, Petitioner’s identification of a “subset” as being that data apparently the subject of one hundred percent human review prior to being “ready to use” (Pet. 40) is inconsistent with Petitioner’s reason why one would have combined Baker and Xu. Further, Petitioner’s style of addressing claim terms in a vacuum leaves us unable to determine whether Petitioner has demonstrated a likelihood of proving the claimed subject matter as a whole would have been obvious. It is not enough for Petitioner to assert that one or more references disclose a human assessment of a subset of data. See Prelim. Resp. 40. In claim 1, for example, the “subset” is of the “identified AF events,” which ties the subset to the limitation directed to identifying AF events and to the “pictographically presenting” limitation, which is based on the human assessment of the subset of the identified AF events. Petitioner does not adequately explain why or how the three relied-upon references would have been combined or modified such that all of the limitations of the claimed subject matter would have been satisfied at the same time in the same related manner as in the claims. Accordingly, Petitioner does not persuasively articulate an adequate reason why and how the teachings of the three reliedupon references would have rendered obvious the claimed subject matter as a whole.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“display of Hatke’s Figure 6 is “strikingly similar” to that of Figures 2 and 4 of the ’996 patent, with Hatke’s “detected events on top of the trend data instead of below it.” Pet. 41–42. We determine that Petitioner’s argument is insufficient because it primarily relies on the purported similarity in appearance of the figures and fails to articulate sufficiently how the prior art suggests the claim limitation. We also agree with Patent Owner that this use of the ’996 patent hints at hindsight. See Prelim. Resp. 29 (“Aside from a desire to recreate Figure 2 of the ’996 patent, Petitioner fails to explain why the skilled person would have wanted to do this.”). Additionally, we disagree with Petitioner’s assertion that Hatke’s figure is “strikingly similar” to that of the ’996 patent. At most, Hatke’s oxyhemoglobin saturation data has an I-beam shape like that of the ’996 patent’s heart rate. However, Hatke’s histogram showing the quantity of apnea events does not have the appearance of AF burden. Rather, Petitioner is forced to look to a separate figure in Hatke, Figure 7, to find what Petitioner calls “blocks” similar to those of the ’996 patent. Id. at 43–44. Petitioner then proposes modifying Hatke’s Figure 6 by “dumbing [it] down,” apparently proposing to convert the quantities of apnea events to blocks depicting apnea event duration, reasoning that drawing a line for time span was a well-known and intuitive technique to depict time span. Id. at 44; see also id. at 46 (Petitioner impliedly arguing that displaying AF burden merely is drawing AF event time spans as a line). We do not find this persuasive because the fact that one could depict duration as a line does not explain adequately why one would modify Figure 6, even in the context of apnea events. Further, even were we to accept that it first would have been obvious to modify a display related to sleep apnea to arrive at Petitioner’s proposed modified Figure 6, Petitioner fails to explain persuasively why one would have utilized that proposed modified display—which would show oxyhemoglobin saturation and respiratory effort—as the format to display heart rate and AF burden. Mere similarity of appearance—particularly assuming, as we must, that one of ordinary skill lacks the knowledge of the figures of the ’996 patent—does not point towards an eventual conclusion of obviousness of the claimed subject matter.” slip op. at 9
§ 103 obviousnesscites KSRPatents in suitUS 7,907,996 - ZTE USA, Inc. v. Saint Lawrence Communications LLCInstitution deniedPTAB · Sep 14, 2016 · IPR2016-00705 · APJ Scott C Moore · IPR · Institution
The Board denied institution on all challenged claims because Ozawa did not show the required comparison of pitch prediction errors across signal paths, and the obviousness grounds did not cure that deficiency.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“specify where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). We have reviewed the Petition and supporting declaration of Dr. Johnson, and these materials do not contain adequate support for Petitioner’s assertion that Ozawa discloses the “a selector for comparing the pitch prediction errors calculated in said at least two signal paths” limitation of claim 1, or the “comparing the pitch prediction errors calculated in said at least two signal paths” limitation of claim 55. Petitioner asserts that “vector selector 22 selects one of the candidate code vectors and one of the gain code vectors that minimize the distortion [i.e., pitch prediction error].” Pet. 18. Petitioner, however, does not cite persuasive evidence that Ozawa discloses calculating the distortion of a pitch codevector in each of at least two signal paths, or that Ozawa’s vector selector 22 performs a comparison between distortions calculated in at least two signal paths. See Pet. 17–19, 37–40, 58. Petitioner’s declarant, Dr. Johnson, testifies that vector selector 22 performs one type of comparison “during mode 1, 2, or 3,” and a different type of comparison “during mode 0.” See Ex. 1036 ¶ 98 (citing Ex. 1006, 6:21–40). Dr. Johnson, however, does not offer persuasive testimony or evidence that Ozawa discloses a comparison between distortions (i.e., pitch prediction errors) that were calculated in two different modes (i.e., signal paths). See Ex. 1036 ¶¶ 96–101, 145–147. For the reasons set forth above, Petitioner has not made an adequate showing that Ozawa discloses the “a selector for comparing the pitch prediction errors calculated in said at least two signal paths” limitation of claim 1, or the “comparing the pitch prediction errors calculated in said at least two signal paths” limitation of claim 55. Accordingly, the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail on its anticipation challenge to independent claims 1 and 55. For the same reasons, the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail on its anticipation challenge to dependent claims 2, 5, 7, 8, 56, 59, and 62, all of which depend from either claim 1 or claim 55. 3.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“is . . . used for selecting a single path used for the computation of the codevector distortions” (i.e., the Petitioner-identified pitch prediction error).” Prelim. Resp. 27. “In other words, Ozawa does not calculate pitch prediction errors for subframes for each of the different modes [paths] and select the mode [path] with the lowest calculated pitch prediction error,” as required by independent claims 1 and 55. Id. (emphasis added). On this record, we find Patent Owner’s argument to be persuasive.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Obviousness of Claims 6, 10, 11, 14, 15, 17, 28, 29, 32, 33, 35, 37, 38, 41, 42, 44, and 60 over Ozawa, G.729, and/or Ordentlich Claims 6, 10, 11, 14, 15, 17, 28, 29, 32, 33, 35, 37, 38, 41, 42, 44, and 60, all depend from either claim 1 or claim 55, and Petitioner’s obviousness arguments regarding these claims all rely on Petitioner’s assertion that Ozawa discloses all limitations of claims 1 and 55. See Pet. 24, 27, 35, 41– 60. Petitioner does not argue that G.729 and Ordentlich individually or collectively cure the deficiencies discussed above in Petitioner’s argument with respect to claims 1 and 55. See id. Accordingly, the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail on its obviousness challenges to dependent claims 6, 10, 11, 14, 15, 17, 28, 29, 32, 33, 35, 37, 38, 41, 42, 44, and 60.” slip op. at 16
§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 7,260,521 - Infobionic, Inc. v. Braemar Manufacturing, LLCInstitution deniedPTAB · Feb 16, 2016 · IPR2015-01705 · APJ Ken B Barrett · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1–9, 20, 21, 31–34, 37, and 38 obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review of U.S. Patent No. 7,212,850 B2 (“the ’850 patent”). Paper 1 (“Pet.”). The Petition challenges the patentability of claims 1–9, 20, 21, 31– 34, 37, and 38 of the ’850 patent on the grounds of obviousness under 35 U.S.C. § 103. Braemar Manufacturing, LLC (Patent Owner) filed a Preliminary Response to the Petition. Paper 9 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the information presented in the Petition, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any of the claims challenged in the Petition. Accordingly, we do not authorize an inter partes review to be instituted as to any challenged claim of the ’850 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“states that are identified by Bock’s engine 40 assessed by a human based on knowledge in the art (as indicated in the ACC Guidelines) and Walker’s disclosure. Pet. 30–31 (citing Ex. 1002 ¶ 44). Petitioner maintains that “Walker selectively presents information based on a measure of correlation between algorithm-identified diagnosis and human-assessments of at least a portion of the algorithm-identified diagnosis.” Id. at 34 (citing Ex. 1002 at ¶ 47). Petitioner identifies steps 412 and 418 as the human-assessments and those same steps as “determin[ing] how the information is presented taking into consideration the degree of relationship between the algorithm and the human diagnoses [i.e. Petitioner’s definition of a measure of correlation].” Id. at 33. Petitioner’s proposal fails to explain sufficiently how the combination teaches both (1) the human assessment and (2) measurement of a correlation between that human assessment and a machine-identified dataset. Petitioner does not explain how Petitioner’s proposal results in the respective features of the claimed invention. The purported disclosure of the “measure of correlation” feature is premised on Petitioner’s assertion that “[s]ince parts of the dataset D2 that the expert does not agree with, or has changed . . ., are not included in datasets D4 and D5, they are not reported in step 430.” Pet. 33 (citing Ex. 1006, col. 72, ll. 65–66; col. 73, ll. 4–5). However, Petitioner does not explain adequately why this is correct. For example, Petitioner does not persuade us that the analysis of dataset D2 results in the deletion of data in the creation of datasets D4 and D5. Walker explains that the “changes” to a dataset may be by “conventional annotation, dictation, interactive marking, and similar techniques.” Ex. 1006, col. 72, ll. 6–8. This does not suggest” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 84 U.S.L.W. 3218 (U.S. Jan. 15, 2016) (No. 15-446). Under the broadest reasonable construction standard, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). On this record and for purposes of this Decision, we determine that no claim terms require express construction.” slip op. at 5
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Other
“In a petition for inter partes review, Petitioner must identify, for a term proposed to be construed as a means-plus-function term, “the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3). “[I]n a means-plus-function claim ‘in which the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm, the disclosed 1 In discussing the recitations of claims 33 and 37, we use shorthand designations and do not reach the issue of the appropriate identity of any claimed function. Cf., e.g., Prelim. Resp. 7 (arguing that Petitioner failed to properly identify the entire correct function). structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.’” Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (quoting WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349 Fed. Cir. 1999); id., (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1253 (Fed. Cir. 2005) (“the corresponding structure is the algorithm.”). In addition to identifying the algorithm disclosed in the Specification, Petitioner “must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4); see also Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009) (“[A] challenger who seeks to demonstrate that a means-plus-function limitation was present in the prior art must prove that the corresponding structure—or an equivalent—was present in the prior art.”).” slip op. at 13
Claim construction§ 103 obviousnessPatents in suitUS 7,212,850 - Infobionic, Inc. v. Braemar Manufacturing, LLCInstitution deniedPTAB · Feb 16, 2016 · IPR2015-01704 · APJ Ken B Barrett · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 12, 18, and 23 were obvious over either asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review of U.S. Patent No. 7,907,996 B2 (“the ’996 patent”). Paper 1 (“Pet.”). The Petition challenges the patentability of claims 1, 12, 18, and 23 of the ’996 patent on the grounds of obviousness under 35 U.S.C. § 103. Braemar Manufacturing, LLC (Patent Owner) filed a Preliminary Response to the Petition. Paper 9 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the information presented in the Petition, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any of the claims challenged in the Petition. Accordingly, we do not authorize an inter partes review to be instituted as to any challenged claim of the ’996 patent.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The Specification refers to a “subset” in describing the embodiment of Figures 5 and 6. See Ex. 1001, col. 4, ll. 26–59. In that embodiment, the system at step 502 analyzes the physiological data and, at step 503, identifies and flags AF events and reports those flags (constituting a first group of data) to the processing system. Id., col. 4, ll. 26–34. Similarly, at 504, the system identifies and reports physiological data, such as ECG [electrocardiogram] data, for a subset of the events identified at 502 and reported at 503. Notably, the system, in this implementation, need not report physiological data for each flag assigned at 503, but need only report data associated with the most significant events identified at 502, thereby minimizing the data sent to a CVT [cardiovascular technician]. Id., col. 4, ll. 35–41 (emphasis added). The CVT analyzes this data and identifies arrhythmia events thereby creating a second group of data. Id., col. 4, ll. 42–44. The processing system compares the two groups of data and, if the system determines that enough of the human-assessed events match the system-reported events, the system-reported data (at step 302) is deemed valid and the data associated with each system-flagged event is pictorially presented. Id., col. 4, ll. 44–54. Significantly, in this implementation, while this pictographic representation can contain all such data, the CVT need only review a subset of this data. In short, the system achieves increased accuracy in the presentation of information relating to arrhythmia events while minimizing the data that the CVT reviews. Id., col. 4, ll. 54–59 (emphasis added).” slip op. at 7
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner also relies upon the testimony of Dr. Stone. Id. at 12–13 (citing Ex. 1002 ¶¶ 24, 25). We do not find the testimony of Petitioner’s expert to be persuasive or helpful as it repeats the Petitioner’s arguments and offers little or no elaboration as to how one of ordinary skill in the art would understand the term “subset.” See Ex. 1002 ¶¶ 24, 25. 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.”); see also Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (nothing requires a fact finder to credit the inadequately explained testimony of an expert). We also do not find persuasive Petitioner’s argument, based on extrinsic evidence, that Patent Owner’s position in related litigations should influence our determination of the proper construction in this forum. See Pet. 13–14. We now turn to the intrinsic evidence.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Petitioner maintains that Walker’s D4 is a subset of dataset D2 and the reconciler’s action is a human assessment of that subset. Pet. 27–28. Petitioner asserts that “[b]ecause of the changes made to dataset D2 by the expert, dataset D4 includes a subset of dataset D2.” Pet. 27 (citing Ex. 1002 ¶ 39). 3 However, Petitioner does not explain adequately why this is correct, and the cited expert testimony merely repeats the Petitioner’s conclusory argument, adding the phrase “[i]n my opinion” (Ex. 1002 ¶ 39). Specifically, Petitioner does not persuade us that the analysis of dataset D2 results in the deletion of data in the creation of dataset D4 such that dataset D4 contains less members than the original dataset D2. Walker explains that the “changes” to a dataset may be by “conventional annotation, dictation, interactive marking, and similar techniques.” Ex. 1006, col. 72, ll. 6–8. Furthermore, Walker discloses that dataset D4 “may be annotated to indicate features identified by the algorithm.” Ex. 1006, col. 72, ll. 63–67 (emphasis added). This does not suggest that the analysis produces a new dataset that contains fewer elements than the analyzed dataset. Further, the reconciler acts upon a union dataset 416 (D5 or DS) of datasets D3 and D4, not simply dataset D4 alone, suggesting that the human (reconciler) assessment is performed on a set of data larger than D2. See id., col. 73, ll. 1–19. For these reasons, we do not find that Walker discloses a human assessment of a subset of data. Petitioner does not rely on any other reference in its proposed combination for the claim recitation regarding a “human assessment of the subset of the identified atrial fibrillation events,” Claims 1, 12, 18, and 23. Accordingly, we are not persuaded that Petitioner has shown a reasonable likelihood of prevailing in its challenge that claims 1, 12, 18, and 23 of the ’996 patent would have been obvious to a person of ordinary skill in the art at the time of the invention over Bock,” slip op. at 12
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 7,907,996
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.