- Polygroup Limited v. Willis Electric Co., Ltd.Rehearing deniedPTAB · Dec 6, 2016 · IPR2016-00802 · APJ William V Saindon · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in instituting inter partes review.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The standard of review for rehearing requests is set forth in 37 C.F.R. § 42.71(d), which states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Specifically for rehearing requests of decisions on institution, “a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Patent Owner’s second argument for rehearing involves the discretion we have under 35 U.S.C. § 325(d) not to institute review if “the same or substantially the same prior art or arguments previously were presented to the Office.” In our Decision, we declined to exercise our discretion to deny. Dec. on Inst. 14. One factor behind our decision that we highlighted was that the grounds asserted against the ’186 patent were going forward already in a related proceeding (namely, the grounds in IPR2016-00802) against a very similar patent. Id. As such, we saw little substantive burden in proceeding on the merits. Id. Further, denying institution here causes additional inefficiencies, as it leaves to the district court issues that we are going to resolve on a closely related patent. Id. Patent Owner points to other cases having different facts in which petitions were denied. See Req. Reh’g 9–11. Different facts will give different results, especially in a multi-factor test such as that involved in § 325(d). Patent Owner does not address any facts that would make us reconsider our Decision. Patent Owner then points out that more cases were filed against it after this particular proceeding was filed (Req. 11–14); this is immaterial as to our decision regarding this proceeding. See 35 U.S.C. § 325(d) (referring to “prior art or arguments [that] previously were presented to the Office”) (emphasis added).” slip op. at 3
- Strike new argumentDecided for petitioner
“Patent Owner’s first argument for rehearing is directed to whether the Petition provided sufficient notice to Patent Owner regarding the basis of the unpatentability challenge. Req. 2–7. Patent Owner argues that Petitioner’s ground was to modify one reference with another as a “wholesale” slip op. at 2
Discretionary denialPatents in suitUS 9,044,056 - Polygroup Limited v. Willis Electric Co., Ltd.Rehearing deniedPTAB · Dec 6, 2016 · IPR2016-00801 · APJ William V Saindon · IPR · Rehearing
The Board denied Willis Electric’s rehearing request, leaving institution in place because it found no abuse of discretion in its notice analysis or decision not to deny under § 325(d).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Specifically for rehearing requests of decisions on institution, “a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“we have under 35 U.S.C. § 325(d) not to institute review if “the same or substantially the same prior art or arguments previously were presented to the Office.” In our Decision, we declined to exercise our discretion to deny. Dec. on Inst. 14. One factor behind our decision that we highlighted was that the grounds asserted against the ’186 patent were going forward already in a related proceeding (namely, the grounds in IPR2016-00802) against a very similar patent. Id. As such, we saw little substantive burden in proceeding on the merits. Id. Further, denying institution here causes additional inefficiencies, as it leaves to the district court issues that we are going to resolve on a closely related patent. Id. Patent Owner points to other cases having different facts in which petitions were denied. See Req. Reh’g 9–11. Different facts will give different results, especially in a multi-factor test such as that involved in § 325(d). Patent Owner does not address any facts that would make us reconsider our Decision. Patent Owner then points out that more cases were filed against it after this particular proceeding was filed (Req. 11–14); this is immaterial as to our decision regarding this proceeding. See 35 U.S.C. § 325(d) (referring to “prior art or arguments [that] previously were presented to the Office”) (emphasis added).” slip op. at 3
Discretionary denialPatents in suitUS 8,454,187 - Polygroup Limited v. Willis Electric Co., Ltd.Rehearing deniedPTAB · Dec 6, 2016 · IPR2016-00800 · APJ William V Saindon · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in instituting review after rejecting its notice and § 325(d) arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The standard of review for rehearing requests is set forth in 37 C.F.R. § 42.71(d), which states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Specifically for rehearing requests of decisions on institution, “a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“we have under 35 U.S.C. § 325(d) not to institute review if “the same or substantially the same prior art or arguments previously were presented to the Office.” In our Decision, we declined to exercise our discretion to deny. Dec. on Inst. 14. One factor behind our decision that we highlighted was that the grounds asserted against the ’186 patent were going forward already in a related proceeding (namely, the grounds in IPR2016-00802) against a very similar patent. Id. As such, we saw little substantive burden in proceeding on the merits. Id. Further, denying institution here causes additional inefficiencies, as it leaves to the district court issues that we are going to resolve on a closely related patent. Id. Patent Owner points to other cases having different facts in which petitions were denied. See Req. Reh’g 9–11. Different facts will give different results, especially in a multi-factor test such as that involved in § 325(d). Patent Owner does not address any facts that would make us reconsider our Decision. Patent Owner then points out that more cases were filed against it after this particular proceeding was filed (Req. 11–14); this is immaterial as to our decision regarding this proceeding. See 35 U.S.C. § 325(d) (referring to “prior art or arguments [that] previously were presented to the Office”) (emphasis added).” slip op. at 3
Discretionary denialPatents in suitUS 8,454,186 - Micron Technology, Inc. v. Limestone Memory Systems LLCRehearing deniedPTAB · Jun 2, 2016 · IPR2016-00094 · APJ Barbara A Parvis · IPR · Rehearing
The Board denied Micron’s rehearing request, leaving institution denied because the petition insufficiently showed the claim 6 column redundancy decoder limitation and a reasoned basis to combine.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or reply. 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“not shown sufficiently that the combination of McAdams and Minami teaches “a column redundancy decoder activating said redundant column selection line in response to said first column address when said second word line is activated” (“the column redundancy decoder limitation”), as recited in claim 6. Dec. 13. We further determined that Petitioner did not provide sufficiently an articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. Id. at 16.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“not shown sufficiently that the combination of McAdams and Minami teaches “a column redundancy decoder activating said redundant column selection line in response to said first column address when said second word line is activated” (“the column redundancy decoder limitation”), as recited in claim 6. Dec. 13. We further determined that Petitioner did not provide sufficiently an articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. Id. at 16.” slip op. at 2
§ 103 obviousnessPatents in suitUS 5,894,441 - Valeo North America, Inc. / Valeo S.A et al. v. Magna Electronics, Inc.All claims unpatentablePTAB · May 26, 2016 · IPR2015-00251 · APJ James A Tartal · IPR · Final written decision
Claims 13–15 are unpatentable as obvious over Lemelson, Huang, Kajimoto, and Toyoda.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“1. “at least one of” Petitioner contends that, as used in the ’491 patent, “at least one of” a series of elements was intended to signify a disjunctive list of alternatives, not a requirement of one of each element listed. Pet. 14–17. Petitioner contrasts this interpretation of “at least one of” from that applied in SuperGuide Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 885–88 (Fed. Cir. 2004) (requiring “at least one of” each identified element), and supports its contention by identifying portions of the specification that make clear the listed elements are disjunctive alternatives. Pet. 15–16. Patent Owner does not address the claim term. For the reasons provided by Petitioner, we are persuaded that “at least one of” is used in the ’491 patent to identify a disjunctive list of alternatives.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for patent owner
“Patent Owner seeks to insert “superimposed” into the claim language by arguing that there is a statement in the specification that “a distance grid can be electronically superimposed upon the video image.” PO Resp. 5 (quoting Ex. 1001, 27:17–26). Had Patent Owner shown there is a difference between “overlay” and “indicia superimposed,” we would not have been persuaded to adopt Patent Owner’s proposed construction because limitations are not imported into a claim from the written description. SuperGuide, 358 F.3d at 875 (“[t]hough understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim”). In this case, however, there is no substantive dispute between the parties over the meaning of “overlay” as it relates to “superimposed.” Petitioner, in reply, proposes a construction of “overlay” as “a permanent or temporary layer of graphic matter to be superimposed on other displayed matter.” Reply 7. Petitioner notes an ordinary and customary definition of “overlay,” as a noun, is “a transparent sheet containing graphic matter to be superimposed on another sheet.” Id. at 6 (quoting Ex. 1019). Thus an “overlay” and “matter to be superimposed” mean the same thing. For the foregoing reasons, to the extent Patent Owner implies any difference between “overlay” and “matter to be superimposed” by including both “superimposed upon” as well as “overlaying” in its proposed construction of “overlay,” we are not persuaded. In sum, we determine that “electronicallygenerated overlay” does not require an express definition, and we apply its ordinary and customary meaning.” slip op. at 6
- Skill levelSkill level board ownDecided for petitioner
“of ordinary skill in the art articulated by Dr. Wilhelm, upon which the Petition relies. See Pet. 8. Patent Owner’s expert, Dr. Turk, states that a person of ordinary skill “would have had at least a Bachelor’s degree in electrical, electronic, or mechanical engineering, or equivalent experience, and at least two years of experience in the relevant field, such as imaging systems for vehicles.” Ex. 2001 ¶ 12. Contrary to Patent Owner’s unsupported argument that the level of ordinary skill in the art is unresolved, Dr. Turk’s testimony is largely consistent with Dr. Wilhelm’s testimony, and Patent Owner does not argue otherwise. We further agree with Petitioner that the patentability of the claims does not turn on whether Dr. Wilhelm’s or Dr. Turk’s express identification of the level of ordinary skill is adopted. See Reply 19. Moreover, it is well-settled that the level of ordinary skill in the art may be reflected by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). A person of ordinary skill is presumed to be aware of all pertinent prior art. Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985); Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1449–54 (Fed. Cir. 1984). We find the level of ordinary skill in the art to be evidenced by the references themselves.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
Patent outcomesUS 8,676,491 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,676,491 - Valeo North America, Inc. / Valeo S.A et al. v. Magna Electronics, Inc.All claims unpatentablePTAB · May 26, 2016 · IPR2015-00250 · APJ James A Tartal · IPR · Final written decision
Claims 1–89, except 8, 11–12, 16–17, 19–21, 28, 31–38, 42, 50–51, 53–54, 62, 70–71, 73–74, 79, 84, were held unpatentable as obvious over the stated reference combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner fails to identify any substantive deficiency in the level of ordinary skill in the art articulated by Dr. Wilhelm, upon which the Petition relies. See Pet. 8. Patent Owner’s expert, Dr. Turk, states that a person of ordinary skill “would have had at least a Bachelor’s degree in electrical, electronic, or mechanical engineering, or equivalent experience, and at least two years of experience in the relevant field, such as imaging systems for vehicles.” Ex. 2001 ¶ 12. Contrary to Patent Owner’s unsupported argument that the level of ordinary skill in the art is unresolved, Dr. Turk’s testimony is largely consistent with Dr. Wilhelm’s testimony, and Patent Owner does not argue otherwise. Because we discern no substantively significant difference between the proposed levels of skill, we further agree with Petitioner that the patentability of the claims does not turn on whether Dr. Wilhelm’s or Dr. Turk’s express identification of the level of ordinary skill is adopted. See Reply 21. Moreover, it is well-settled that the level of ordinary skill in the art may be reflected by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We find the level of ordinary skill in the art to be reflected in the cited references, and discern no reason why Petitioner in this case must expressly state in the Petition “how” it is reflected. A person of ordinary skill is presumed to be aware of all pertinent prior art. Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985); Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1449–54 (Fed. Cir. 1984). In this case, the level of ordinary skill in the art is evidenced by the references themselves.” slip op. at 12
- Expert testimonyPetitioner expert creditedDecided for petitioner
“5 According to Patent Owner, Dr. Wilhelm’s Declaration should be afforded no weight because his opinions consider whether a claim “would more likely than not have been obvious” to a person of ordinary skill, rather than “whether the subject matter ‘would have been obvious.’” PO Resp. 47–49. As an initial matter, Patent Owner misrepresents the Institution Decision by stating it “acknowledges that Dr. Wilhelm’s Declaration uses an improper obviousness standard,” when that decision does no such thing, and instead states “[e]ven assuming Patent Owner’s distinction has merit, we are not persuaded that it warrants affording no weight to Dr. Wilhelm’s entire declaration.” Paper 7, 10 (emphasis added). According to Petitioner 1. Scope and Content of the Prior Art (a) Lemelson (Ex. 1005) Lemelson, titled “Motor Vehicle Warning and Control System and Method,” describes a system and method that use a camera mounted on a vehicle to scan the roadway to assist the driver of a vehicle in preventing or minimizing accidents. Ex. 1005, Abstract. An image-analyzing computer processes the video picture signals generated by the camera to generate codes that serve to identify obstacles. Id. A decision computer in the vehicle receives code signals from the image analyzing computer, as well as the speedometer or other sensors, to generate control signals. Id. The code signals may be displayed, and sound generation or warning means used to warn the driver of approaching and existing hazards. Id. The control signals may be used to operate the brakes and steering of the vehicle to lessen the effects of a collision. Id. “Dr. Wilhelm combined into a single statement the standard for determining obviousness (whether the claimed subject matter as a whole would have been obvious to a [person of ordinary skill in the art]) with the preponderance of the evidence (i.e., more likely than not) burden of proof applicable in this inter partes review.” Reply 2. We find no merit to Patent Owner’s contention that an expert’s testimony is entitled to no weight merely because his opinions discuss what, more likely than not, would have been obvious to a person of ordinary skill. Similarly, we find no basis for Patent Owner’s contention that Dr. Wilhelm’s Declaration should be afforded no weight because he “relies on information in the claim charts that is not actually there.” See PO Resp. 43–47.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“1. “at least one of” Petitioner contends that, as used in the ’330 patent, “at least one of” a series of elements was intended to signify a disjunctive list of alternatives, not a requirement of one of each element listed. Pet. 17–19. Petitioner contrasts this interpretation of “at least one of” from that applied in SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 885–88 (Fed. Cir. 2004) (requiring “at least one of” each identified element), and supports its contention by identifying portions of the specification that make clear the listed elements are disjunctive alternatives. Pet. 18. Patent Owner does not address the claim term. For the reasons provided by Petitioner, we are persuaded that “at least one of” is used in the ’330 patent to identify a disjunctive list of alternatives. 2. “display intensity” Petitioner contends “display intensity” should be construed to mean “luminance” because the ’330 patent describes values for “display intensity” in candelas/sq. meter, the International System of Units (“SI”) units for luminance. Pet. 20. Patent Owner does not dispute Petitioner’s contention. PO Resp. 3; Ex. 2001 ¶ 20. We agree with Petitioner that “display intensity,” as used in the ’330 patent, is synonymous with “luminance.”” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“3. “human machine interface” Claim 22 requires the driver assist system of claim 1, “comprising a human machine interface, said human machine interface comprising at least one user input.” Ex. 1001, 33:21–23. Claims 55 and 88 contain similar limitations. Petitioner contends that “human machine interface” should be interpreted to mean the part of an electronic machine or device which serves for the information exchange between the operator/user and the machine/device. The term “human machine interface” does not appear in the specification of the ’330 patent outside of the claims. Claim 22 recites that the “human machine interface” accepts user input. Petitioner, however, has not explained sufficiently why we should adopt its proposed construction requiring that the “human machine interface” must “exchange” information from the device to the user. However, there is no dispute that Lemelson discloses a human machine interface, and Patent Owner does not argue that the term requires an express construction. PO Resp. 3; see also Ex. 2001 ¶ 21. Accordingly, we determine no express construction is necessary for “human machine interface.”” slip op. at 6
Patent outcomesUS 8,543,330 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,543,330 - T-Mobile US, Inc. / T-Mobile USA, Inc. et al. v. Tracbeam, LLCInstitution deniedPTAB · May 25, 2016 · IPR2016-00729 · APJ Barbara A Parvis · IPR · Institution
The Board denied institution on claims 1, 2, and 44 under § 325(d), and denied joinder with IPR2015-01712.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“some or all grounds for unpatentability for some or all of the challenged claims.” 37 C.F.R. § 42.108(b). Our discretionary determination of whether to institute review is guided by 35 U.S.C. § 325(d), which states, in relevant part, that “[i]n determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.”4 Petitioner’s second attempt to challenge claims 1, 2, and 44 of the ’327” slip op. at 8
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response, under section 313 or the expiration of time for filing such a response, determines warrants the institution of an inter partes review under section 314. 35 U.S.C. § 315(c) For the reasons above, based on the circumstances of this case, we exercise our discretion under 35 U.S.C. § 325(d), and deny the Petition requesting institution of inter partes review in IPR2016-00729. Accordingly, we deny Petitioner’s request to join IPR2016-00729 with IPR2015-01712.” slip op. at 11
Discretionary denialPatents in suitUS 7,298,327 - T-Mobile US, Inc. / T-Mobile USA, Inc. et al. v. Tracbeam, LLCInstitution deniedPTAB · May 25, 2016 · IPR2016-00728 · APJ David C Mckone · IPR · Institution
The Board denied institution for claim 25 under § 325(d), finding the petition repeated prior art and arguments from an earlier petition; it denied joinder as moot.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Previous panels of this Board have expressed concern with permitting a petitioner to file an inadequate first petition and subsequently allowing the petitioner to correct errors in the first petition through the filing of a second petition. For example, in ZTE Corp. v. ContentGuard Holdings Inc., Case IPR2013-00454 (PTAB Sept. 25, 2013) (Paper 12), slip op. at 5–6, a panel explained: The Board is concerned about encouraging, unnecessarily, the filing of petitions which are partially inadequate. A decision to institute review on some claims should not act as an entry ticket, and a how-to guide, for the same Petitioner who filed an unsuccessful joinder motion, and is outside of the one-year statutory period, for filing a second petition to challenge those claims which it unsuccessfully challenged in the first petition. Similarly, another panel denied a petition with grounds that served as “second bites at the apple” and used a prior decision “as a roadmap to remedy [the first petition’s] prior, deficient challenge,” explaining that “[a]llowing similar, serial challenges to the same patent, by the same petitioner, risks harassment of patent owners and frustration of Congress’s intent in enacting the Leahy-Smith America Invents Act.” Butamax Advanced Biofuels LLC, v. Gevo, Inc., Case IPR2014-00581, 2014 WL 5299385, at *6 (PTAB Oct. 14, 2014) (Paper 8). Patent Owner contends that we should follow this guidance and deny the Petition. Prelim. Resp. 10–19. We agree with Patent Owner that this is a factor that weighs against institution of the Petition.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“We have considered Petitioner’s proffered justifications as well as Patent Owner’s concerns regarding allowing Petitioner to correct its first petition through filing a second Petition advancing the same prior art. We exercise our discretion, under Section 325(d), to deny the Petition because “the same or substantially the same prior art or arguments previously were presented to the Office.” III. CONCLUSION We exercise our discretion to deny the Petition under 35 U.S.C. § 325(d). Because we deny the Petition, we deny Petitioner’s Motion for Joinder as moot. IV. ORDER Accordingly, it is: ORDERED that, pursuant to 35 U.S.C. § 325(d), an inter partes review is not instituted for claim 25 of U.S. Patent No. 7,525,484 B2; and” slip op. at 14
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“Joinder, however, is appropriate only when the underlying petition sought to be joined warrants institution. According to 35 U.S.C. § 315(c) (emphasis added): If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. As explained below, we have considered the Petition and the Preliminary Response and determine that the Petition does not warrant the institution of an inter partes review. Accordingly, we do not reach whether the Petition is time barred or whether joinder otherwise would be appropriate. Petitioner’s Motion for Joinder is denied as moot.” slip op. at 9
Discretionary denialPatents in suitUS 7,525,484 - Zimmer Surgical, Inc. v. Stryker CorporationInstitution deniedPTAB · May 18, 2016 · IPR2016-00265 · APJ Zhenyu Yang · IPR · Institution
The Board denied institution on claims 1–20 because the asserted combinations did not establish a reasonable likelihood of showing the claimed conduit and tip limitations obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“CONCLUSION On this record, Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of any challenged claim of the ’682 patent on the grounds asserted in the Petition. ORDER Accordingly, it is ORDERED that Petitioner’s request for an inter partes review of claims 1–20 of the ’682 patent is denied and no inter partes review is instituted.” slip op. at 18
- BurdenNot shown unpatentable
“In addition, although claim 1 recites a tip having an exit opening below the headband, Petitioner does not sufficiently account for this independent structure. At one point, Petitioner appears to equate the rear air exit in Diaz with the tip. See Pet. 11 (stating “positioning a rear air exit 78 or tip below rear support 130”) (emphasis added). At another point, Mr. Jones testifies that “one of ordinary skill in the art would have understood that extending air flow channel 26 to the back of the neck would require a tip.” Ex. 1002 ¶ 34([1.g]). Neither position is persuasive. Regarding rear exit 78, we agree with Patent Owner that it is merely a slot at the end of the air flow channel, which is formed as part of the shell. See Prelim. Resp. 12–13; Ex. 1004, Fig. 10. Thus, we are not persuaded that such a structure meets the limitation of the tip recited in claim 1. As for Mr. Jones’s testimony, an expert’s opinion is only as good as the facts upon which it is based. 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.”). Here, Mr. Jones provides no citation or explanation, other than that it was his opinion, to support his statement. Thus, we are not persuaded that the recited tip would have been part of the background knowledge in the art. In sum, based on this record, we determine that Petitioner has not shown sufficiently that the combination of Diaz and Hull teaches or suggests the conduit and the tip as recited in claim 1. Accordingly, Petitioner has not established a reasonable likelihood that it would prevail in showing that” slip op. at 12
- Expert testimonyPetitioner expert discountedDecided for patent owner
“below the headband, Petitioner does not sufficiently account for this independent structure. At one point, Petitioner appears to equate the rear air exit in Diaz with the tip. See Pet. 11 (stating “positioning a rear air exit 78 or tip below rear support 130”) (emphasis added). At another point, Mr. Jones testifies that “one of ordinary skill in the art would have understood that extending air flow channel 26 to the back of the neck would require a tip.” Ex. 1002 ¶ 34([1.g]). Neither position is persuasive. Regarding rear exit 78, we agree with Patent Owner that it is merely a slot at the end of the air flow channel, which is formed as part of the shell. See Prelim. Resp. 12–13; Ex. 1004, Fig. 10. Thus, we are not persuaded that such a structure meets the limitation of the tip recited in claim 1. As for Mr. Jones’s testimony, an expert’s opinion is only as good as the facts upon which it is based. 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.”). Here, Mr. Jones provides no citation or explanation, other than that it was his opinion, to support his statement. Thus, we are not persuaded that the recited tip would have been part of the background knowledge in the art.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“In an obviousness inquiry, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” KSR, 550 U.S. at 418. To determine whether there was a reason to combine and modify the teachings of prior art, we review the background knowledge possessed by one of ordinary skill in the art and consider common sense. Id. Nevertheless, “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. Here, Petitioner is correct that Diaz “expressly recognizes the advantage of distributing air to a user’s neck.” Pet. 10 (citing Ex. 1004, 2:42–48, 3:38–39, 5:49–52). With that recognition, however, Diaz teaches a single fan that distributes air toward both the face and the neck of the user. Ex. 1004, 2:42–46, 5:49–52. Diaz does not mention the need to discharge air directly onto the back of the neck, as required by claim 1. Nor does Hull suggest so. Indeed, Hull teaches directing air “at the sides of the neck in the vicinity of the large arteries and veins where air has the greatest cooling effect.” Id. at 3:31–34, 3:124–29. Neither Petitioner nor Mr. Jones explains persuasively why one of ordinary skill in the art would have extended the air channel in Diaz downwardly to meet the limitation of a conduit, as required in claim 1, and not directed the air to the sides of the neck, as taught in Hull.” slip op. at 11
§ 103 obviousnesscites KSRPatents in suitUS 7,752,682 - Zimmer Surgical, Inc. v. Stryker CorporationInstitution deniedPTAB · May 10, 2016 · IPR2016-00261 · APJ Barbara A Parvis · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of proving any challenged claim unpatentable on the asserted grounds.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“The broadest reasonable interpretation must reasonably reflect the plain language and disclosure. In light of the ’234 patent Specification, we are not persuaded by Petitioner that the broadest reasonable interpretation of “light emitting head” encompasses a housing that does not emit light. On this record, we determine no further construction of “light emitting head” is needed to resolve a controversy in this proceeding.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“In light of the ’234 patent Specification, “flows over” in the context of claims 1 and 8 and the ’234 patent Specification means air is discharged directly above or in-line with the light source so as to cover completely the light source and blow air from the light assembly. Accordingly, for the reasons given above, we determine that in light of the ’234 Patent Specification, the broadest reasonable interpretation of “flows over” is “flows directly above.”” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“situated above each eye of the wearer (Ex. 1004 ¶ 12) on either side of the helmet (id. ¶ 25). Clupper indicates that “[t]he proximity of the light sources 32 to the ventilation opening 19 facilitates heat dissipation from the LED clusters 37.” Ex. 1004 ¶ 29. The proximity of the light sources to the opening does not describe sufficiently that the air flows directly above an assembled light source and light emitting head. Additionally, in light of Patent Owner’s contentions, we are not persuaded that heat dissipation must be caused by air flow. Prelim. Resp. 18. Mr. Jones does not specify sufficiently other data or facts that he relies on. See 37 C.F.R. § 42.65(a). Thus, we determine that Petitioner has not shown sufficiently that Clupper discloses air flow from the front duct that flows directly above an assembled light source and light emitting head. We, therefore, determine that Petitioner has not shown sufficiently that Clupper discloses the light assembly limitation. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in showing that independent claims 1 and 8 are unpatentable on the ground that they are anticipated by Clupper.” slip op. at 14
- Expert testimonyPetitioner expert discountedDecided for patent owner
“modifications needed to Hyde and Diaz to mount the light on the helmet. However, Mr. Jones’s testimony regarding what one of ordinary skill in the art would have recognized is not supported sufficiently by the citations that he provides to Hyde and Diaz. For instance, Mr. Jones’s testimony that “Diaz teaches directing cool air to the face of the wearer by discharging air from a front air exit” (id.), without more, does not support sufficiently that this face-cooling technique would have been known by one of ordinary skill in the art to pertain to cooling a light. Mr. Jones’s testimony does not specify sufficiently other data or facts that he relies on. 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.”) Additionally, Mr. Jones’s testimony above regarding the light assembly in not sufficient in light of Mr. Jones’s understanding of the claims. Claims 1 and 8 recite that the light assembly includes a light source and a light emitting head. Mr. Jones testifies “I understand that Petitioner has offered that the broadest reasonable construction of ‘light emitting head’ should encompass a light housing.” Ex. 1002 ¶ 16. Mr. Jones also testifies “I have used this construction unless otherwise noted.” Id. Mr. Jones’s testimony above regarding the position of the light assembly, in light of his testimony considered in its entirety, encompasses the positioning of a housing that does not emit light. For this additional reason, we are not persuaded that this testimony is sufficient to support obviousness of the light assembly limitation, under the broadest reasonable interpretation of the term. Furthermore, Mr. Jones’s testimony does not provide an articulated reasoning with rational underpinning to support the legal conclusion of obviousness. An invention “composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. The obviousness evaluation “should be made explicit.” Id. Mr. Jones’s testimony does not provide a sufficiently explicit reasoning for combining the teachings in the manner claimed.” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,282,234
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