• Axon Enterprise, Inc. / Dedrone Holdings, Inc. et al. v. Airspace Defense, Inc.Some claims unpatentable
  PTAB · Oct 6, 2026 · IPR2025-00629 · APJ Scott C Moore · IPR · Final written decision

  Original claim 12 is not unpatentable; substitute claim 37 is added, while substitute claims 21–28 and 30–36 are denied as obvious.

  RulingsFinal written decision

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

    “F.3d at 1279–80, we begin our analysis with the Specification of the ’711 Patent. The Specification indicates when a UAV (such as the recited “reference aerial vehicle”) navigates autonomously, it flies without manual control, and can, for example, track and fly to a target using information captured onboard the vehicle itself. See Ex. 1001, 3:24–28 (“[I]t may not be desirable to manually control the interceptor aerial vehicle to follow the target UAV. In some embodiments, the interceptor aerial vehicle is able to autonomously track and fly to the target UAV using machine vision based on images captured by a camera of the interceptor aerial vehicle.”). The Specification also indicates that “autonomous” means more than just “automatic flight,” and clarifies that autonomous navigation occurs when a UAV that previously received a target location from an external source subsequently turns and flies itself towards the received location. See, e.g., id. at 4:15–17 (disclosing that the detected location of a target may be provided to an interceptor “to allow it to automatically and autonomously fly toward the direction of the detected location”); 15:64–16:3 (automatic and autonomous navigation occurs when an interceptor’s navigation component and/or flight controller receive the location of a target, and adjust the interceptor “to turn and fly towards the received location . . . based on the received location”); 16:49–60 (“For example, a flight direction and/or speed of an interceptor aerial vehicle are automatically and autonomously adjusted based on a location and size of the target within the captured image. . . . This allows the flight path of the interceptor aerial vehicle to be dynamically adjusted to track and follow a moving target.”).” slip op. at 11

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

    “have had reason to combine Beard and Laufer in the manner proposed by Petitioner, the combination would not satisfy the Autonomous Navigation limitation required by claim 12 because Laufer’s autopilot commands are generated by and transmitted from a remote command center (i.e., Laufer’s central controller 115). PO Resp. 15–16. In its Reply, Petitioner does not dispute that Laufer’s autopilot commands are generated by Laufer’s central controller 115, which is remote from the aircraft being controlled. See Reply 13–17. Petitioner asserts, however, that the combination still satisfies the Autonomous Navigation limitation because these autopilot commands are generated without human input. See id. Based on the complete trial record, Patent Owner’s arguments are persuasive. See PO Resp. 15–16; PO Sur-reply 42, 1–6; Ex. 2025 ¶¶ 84–87. The flight of Beard’s UAV 100 under the control of Laufer’s autopilot commands does not satisfy the Autonomous Navigation limitation of claim 12, as we have construed that limitation, because Laufer’s autopilot commands are generated at a location that is remote from UAV 100 (Laufer’s central controller 115.) See, e.g., Ex. 1010 ¶ 40 (“Central controller 115 uses autopilot command module 440 to generate autopilot aircraft commands”), ¶¶ 26, 30 (clarifying that central controller 115 and the controlled interceptor aircraft are separate devices that may communicate through a “wireless connection”), Fig. 4 (depicting “aircraft control commands 475” being generated externally from the depicted “Interceptor Aircraft”); see also Ex. 2025 ¶¶ 95–95. Petitioner never disputes that, in the proposed combination, Laufer’s central controller 115 would remain external to Beard’s UAV 100. See Reply 13–17. Instead, Petitioner relies on its proposed construction of the Autonomous Navigation limitation, which would have encompassed such an arrangement. See id. Our construction of the Autonomous Navigation limitation, which did not adopt Petitioner’s claim construction position, is dispositive of Petitioner’s argument. We thus determine that Petitioner has not shown by a preponderance of the evidence that claim 12 would have been obvious over Beard and Laufer.” slip op. at 15

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “the legal requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121. Lectrosonics, Paper 15 at 4, 7–8. For the reasons that follow, we determine that Patent Owner has satisfied this burden. 1. Proposal of a Reasonable Number of Substitute Claims A motion to amend must “propose a reasonable number of substitute claims.” 35 U.S.C. § 316(d)(1)(B); see also 37 C.F.R. § 42.121(a)(3) (“A motion to amend may cancel a challenged claim or propose a reasonable number of substitute claims.”). “There is a rebuttable presumption that a reasonable number of substitute claims per challenged claim is one (1) substitute claim.” Lectrosonics, IPR2018-01129, Paper 15 at 4; see also 37 C.F.R. § 42.121(a)(3). Patent Owner has shown it proposes a reasonable number of substitute claims by proposing a single substitute claim for each of challenged claims 1–4, 8–11, and 13–20. MTA 1–2, Claims App. Petitioner does not argue otherwise. See generally MTA Opp. We determine that Patent Owner meets this requirement. 2. Amendments Respond to a Ground of Unpatentability “A motion to amend may be denied where … [t]he amendment does not respond to a ground of unpatentability involved in the trial.” 37 C.F.R. § 42.121(a)(2)(i). Patent Owner has responded to the grounds of unpatentability involved in this proceeding by amending the claims in response to the Petition’s asserted prior art. See MTA 2, 25, Claims App. Petitioner does not argue otherwise. See generally MTA Opp. We determine that Patent Owner meets this requirement. 3. No Enlargement of the Scope of the Claims An amendment may not seek to enlarge the scope of the claims of the patent. 35 U.S.C. § 316(d)(3); 37 C.F.R. §§ 42.121(b)(1)–(b)(2). Patent Owner asserts that the amendments in the Motion do not enlarge the scope of the claims of the patent because each proposed substitute claim “retains all of the limitations of the corresponding challenged claim, and each proposed independent substitute claim adds further limitations.” See MTA 2, Claims App. Petitioner does not argue otherwise. See generally MTA Opp. We determine that Patent Owner meets this requirement. 4. No Introduction of New Matter An amendment may not introduce new matter. 35 U.S.C. § 316(d)(3);” slip op. at 22

  • 112 supportDecided for patent owner

    “Having considered the evidence and argument cited by both parties, we determine there is sufficient written description support for the disputed portions of limitations [37.e1], [37.e3,] and [37.e4]. The ’452 application discloses selecting between groups of processing schemes (e.g., algorithms) depending on a confidence level, where the groups are, for example: high cost, high robustness algorithms; medium cost, medium robustness algorithms; and low cost, low robustness algorithms. See Ex. 2019 ¶¶ 146–147. These schemes or algorithms may be neural networks. See, e.g., id. ¶ 50 (including neural network as a type of algorithm); see also id. ¶¶ 109–110); see generally MTA Opp 1 (not disputing that schemes may be neural networks). Specifically, the ’452 application describes “algorithms that process video frames of one or more video data streams,” and “produce a prediction of objects within the video f[r]ame, as well as a confidence number that is a measure of quality for that prediction.” Id. ¶ 141. The ’452 application also discloses the concept of switching between neural networks based on confidence levels. In particular, the ’452 application discloses that a “process cycles through the processing schemes to produce a detection of an object,” for example, where “if the confidence number is higher than an activation number, an action is performed to stop or change a running group (i) and select or switch to group (ii).” Id. ¶ 146. More particularly, “a processing scheme from the group of (i) High cost (low refresh rate), high robustness algorithm[s] can select a cheaper processing scheme from the group of (ii) Medium cost, medium robustness algorithms.” Id. The ’452 application additionally discloses that schemes or algorithms (e.g., neural networks) are applied to individual video frames, and that the confidence levels that determine which neural network will be applied in the future are also derived from individual video frames. For example, as discussed above, the ’452 application describes that “[t]he processing schemes produce a prediction of objects within the video f[r]ame, as well as a confidence number that is a measure of quality for that prediction.” Ex. 2019 ¶ 141 (emphases added). The ’452 application also describes selecting and applying an individual neural network, rather than only selecting and applying a group of processing schemes. For example, as highlighted above, the ’452 application describes that “a processing scheme from the” “High” group “can select a cheaper processing scheme from the” “Medium” group. Id. ¶ 146 (emphases added). In our view, these disclosures, read together, would reasonably convey to one skilled in the art that the inventor had possession of the disputed subject matter described above. See Ariad, 598 F.3d at 1351.” slip op. at 24

  Patent outcomesUS 10,514,711 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · Graham · Nautilus
  Patents in suitUS 10,514,711
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Chien-Min SungSome claims unpatentable
  PTAB · Sep 17, 2025 · IPR2024-00535 · APJ George R Hoskins · IPR · Final written decision

  Claims 1–9 and 12–21 are unpatentable over the asserted grounds; claims 10 and 11 were not shown unpatentable because Tsai and Sung ’026 did not establish the required number of working particles.

  RulingsFinal written decision

  • Skill levelOther

    “Level of Ordinary Skill in the Art and Patent Owner’s Motion to Exclude Dr. Shanfield’s Testimony ..................................................... 9 1. Person of Ordinary Skill in the Art Pertaining to the ’802 Patent .................................................................................... 9 2. Patent Owner’s Motion to Exclude Dr. Shanfield’s” slip op. at 2

  • ExcludeMotion to exclude, deniedDenied

    “Level of Ordinary Skill in the Art and Patent Owner’s Motion to Exclude Dr. Shanfield’s Testimony ..................................................... 9” slip op. at 2

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “16–18 being obvious over Tsai and Sung ’026 as our own in this Decision. See Pet. 56–62, 70–75. We accordingly conclude a preponderance of the evidence presented here establishes the unpatentability of these claims. Patent Owner has waived any opposition other than his filing date priority arguments discussed above. See Inst. Dec. 78; Paper 15, 10.” slip op. at 106

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “concluded: “It is not clear to us, and Dr. Shanfield does not explain persuasively, how Tsai’s disclosure that its ODD has more cutters (i.e., working particles per claim 9) than the conventional BDD leads to his conclusion that all of the diamond particles in the ODD are cutters.” Inst. Dec. 76 (emphasis added). Patent Owner urges us to maintain that conclusion, for various reasons, including testimony from Dr. Tsai. See PO Resp. 49–52; Ex. 2011 ¶¶ 43–47. Patent Owner also reiterates his opposition to Dr. Shanfield’s “extrapolation” from Tsai’s Figures to reach a conclusion as to the total number of diamond grits in the Tsai ODD, including the “working” particles of claims 8, 9, and 12. See id. at 50–51 (citing Ex. 1002 ¶¶ 186–189).” slip op. at 108

  Patent outcomesUS 9,724,802 mixed
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,724,802
• Synaffix B.V. v. Hangzhou Dac Biotech Co., Ltd.Some claims unpatentable
  PTAB · Aug 26, 2025 · IPR2022-01531 · APJ Devon Zastrow Newman · IPR · Final written decision

  Claims 1–17, 20, 21, 24, 26, and 29–31 are unpatentable; claims 25 and 32–34 were not shown unpatentable, and the motion to exclude was dismissed as moot.

  RulingsFinal written decision

  • RemandOther

    “review of claims 1–17, 20, 21, 24–26, and 29–34 of the ’682 patent. Paper 2 (“Pet.”), 1, 3. Patent Owner, Hangzhou DAC Biotech Co., Ltd., filed a Preliminary Response (Paper 9, “Prelim. Resp.”). We initially determined that the information presented in the Petition did not establish a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims, and did not institute inter partes review. Paper 17. Petitioner requested Director review of our decision denying institution (Paper 18 (“Request”)). The Director delegated review of the decision to a Delegated Rehearing Panel (“DRP”). Paper 19. Patent Owner was granted the option to file a response to Petitioner’s Request (Paper 22 (“Request Resp.”)). The Delegated Review Panel vacated our decision and remanded the case to this panel with a revised claim construction for claim 1. Paper 23 (“DRP Dec.”). On August 30, 2024, we instituted an inter partes review after remand from the Director. Paper 25 (“Inst. Dec.”). Patent Owner subsequently filed a Patent Owner Response (Paper 31, “Resp.”), Petitioner filed a Reply (Paper 36, “Reply”), Patent Owner filed a Sur-reply (Paper 44, “Sur-reply”), and Petitioner filed a Sur-sur-reply (Paper 48, “Sur-sur-reply”).” slip op. at 2

  • PTAB / AIA Trials › Motions to amend / substitute claimsOther

    “I. Patent Owner’s Motion to Exclude Evidence Patent Owner moves to exclude Exhibits 1089 and 1090. Paper 50. As we did not rely on either of Exhibits 1089 or 1090 in deciding this matter, Patent Owner’s motion is dismissed as moot.” slip op. at 96

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

    “For these reasons, Patent Owner’s arguments and cited evidence also” slip op. at 31

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed

    “function as R2, and the ethyl group may function as R4, which can be a linear alkyl having 1–6 carbon atoms. We note that claim 3 permits R5 and R6 to be absent. For these reasons, the arguments presented in the Petition demonstrate that claim 3 would have been obvious over Singh’s Compound 3 when modified in view of Harris.” slip op. at 73

  Patent outcomesUS 10,131,682 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,131,682
• Mission Intergrated Technologies, LLC v. Joshua ClementeSome claims unpatentable
  PTAB · Feb 19, 2025 · IPR2023-01285 · APJ Barry L Grossman · IPR · Final written decision

  Claims 1–8 and 10–17 are unpatentable as anticipated by each asserted reference; claim 9 was not shown unpatentable because the references do not disclose its claimed ramp.

  RulingsFinal written decision

  • Skill levelSkill level board ownPetitioner expert discountedDecided for petitioner

    “asserts that a person of ordinary skill in the art would have had “at least an undergraduate degree in mechanical engineering, and about two years of experience designing structural systems like tactical staircases or elevated tactical systems that can be vehicle mounted and can be folded and stowed and elevated for use by personnel or equivalent experience.” Pet. 3 (citing Ex. 1021 ¶¶ 12, 13). Mr. Hayduk states his conclusion as to the proposed level of ordinary, but does not disclose the underlying facts or data on which his opinion is based. Ex. 1021 ¶¶ 12, 13. Thus, his opinion testimony is entitled to little or no weight. 37 C.F.R. § 42.65(a). Here, we give it some, but little, weight because it appears to be consistent with the general prior art discussed and cited in the record of the ’677 patent. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill. See generally, PO Resp. For purposes of this Decision, based on the prior art, the sophistication of the technology at issue, and Mr. Hayduk’s Declaration testimony, we adopt, with minor modification, Petitioner’s undisputed definition of the level of ordinary skill. We determine that in this proceeding a person of ordinary skill would have had a bachelor’s degree in mechanical engineering and two years of experience designing structural systems like tactical staircases or elevated tactical systems that can be vehicle mounted and can be folded and stowed and elevated for use by personnel or equivalent experience, or an equivalent balance of education and work experience, such that more education offsets the need for some work experience, and more work experience can offset the need for coursework leading to a four-year college degree. We also have eliminated the open-ended phrase of “at least” and the word “about” in describing the” slip op. at 15

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

    “Petitioner asserts that the claim terms require no express construction. Pet. 5–6. Patent Owner does not challenge Petitioner’s position. See generally Prelim. Resp. Having considered the parties’ positions and evidence of record, we determine that no express construction of any claim term is necessary to determine the patentability issues in this proceeding. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 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))). To the extent further discussion of the meaning of any claim term is necessary to our decision, we provide that discussion below in our analysis of the asserted grounds of unpatentability.” slip op. at 16

  • BurdenOther

    “Petitioner has the burden of proving unpatentability of a claim by a preponderance of the evidence. 35 U.S.C. § 316(e).” slip op. at 3

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for petitioner

    “In this inter partes review, the burden is on the petitioner to show a reasonable likelihood that it would prevail on a ground of unpatentability. 35 U.S.C. § 314(a). A petitioner first must raise the issue of entitlement to a claimed priority date by “identifying, specifically, the features, claims, and ancestral application or applications allegedly lacking § 112 support for the claims based on the identified features.” Focal Therapeutics, Inc. v. Senorx, Inc., IPR2014-00116, Paper 8, slip op. at 9–10 (PTAB Apr. 22, 2014). Then, the patent owner must make a sufficient showing of entitlement to earlier filing date(s), in a manner that is commensurate in scope with the specific points and contentions raised by the petitioner. See id. Here, Petitioner asserts that “[t]he ’677 patent includes more content than the ‘022 provisional application.” Pet. 6. We do not consider this single sentence comment on “content” to provide the specificity required of comparing the disclosure of the provisional application to the claims of the ’677 patent to thereby shift the burden to Patent Owner to show entitlement to the earlier filing date. Thus, based on the record before us, for purposes is November 20, 2018, the filing date of the provisional application.” slip op. at 17

  Patent outcomesUS 11,174,677 mixed
  Claim construction§ 102 anticipation
  Patents in suitUS 11,174,677
• Fusion Orthopedics, LLC v. Extremity Medical, LLCSome claims unpatentable
  PTAB · Nov 4, 2024 · IPR2023-00894 · APJ Robert A Pollock · IPR · Final written decision

  Claims 1–10 and 12–15 are unpatentable; claim 11 was not shown unpatentable. Substitute claims 16–25 and 27–30 are unpatentable over Mazur; claim 26 was not reached.

  RulingsFinal written decision

  • BurdenMixed

    “It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)). Here, however, not until its Reply does Petitioner belatedly suggest that Ferrante’s disclosure of bone screws with self-tapping ends equally meets the limitation of claim 10 (with respect to the first member) as with claim 11 (with respect to the second member), and that both claims are obvious in light of “evidence” from Ferrante “that it was well known to equip bone screws with self-tapping ends.” Reply 26–27. We do not discern these arguments in the Petition, and consider them waived. See Netflix, Inc. v. DivX, LLC, 84 F.4th 1371,1377 (Fed. Cir. 2023) (“While the Board should not take an overly mechanistic view of a petition and decline to address an argument because the petitioner did not present it with ideal vigor and clarity, the Board should also not have to decode a petition to locate additional arguments beyond the ones clearly made.”). In sum, Petitioner’s error in failing to first address limitations of claim 10 in the Petition specific to the Cognet/Ferrante combination indicates a failure to meet the particularity requirements for what must be in the petition and cannot be left to be filled in on reply. See 35 U.S.C. § 312(a)(3); 37 C.F.R. §§ 42.22(a)(2) (requiring, among other things, “a detailed explanation of the significance of the evidence”), 42.104(b)(4)–(5) (requiring that petition “specify where each element of the claim is found in the prior art patents or printed publication relied upon” and, regarding submitted evidence, state “the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge”). Microsoft, 2022 WL 989403, at *6. Accordingly, Petitioner has not shown persuasively that claim 11 would have been obvious in light of Cognet and Ferrante for the reasons set forth in the Petition. slip op. at 41

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We also find persuasive Mr. Dominguez’s explanation that one of ordinary skill in the art would have understood “bore” as including stepped diameter holes, sometimes described as a bore having a counterbore. See generally Ex. 1018 ¶¶ 4–29; Reply 3–10. Three of Mr. Dominguez’s illustrative examples are reproduced in the annotated figures below. The above figures show Mr. Dominguez’s annotated illustrations from the Jackson (Ex. 1019, Fig. 3), Brånemark (Ex. 1021, Fig. 4), and Ray (Ex. 1025, Fig. 1) references as discussed at paragraphs 10, 12, and 13, respectively, of Mr. Dominguez’s Second Declaration. With reference to the above figures, Mr. Dominguez testifies that “Jackson describes a bone repair set screw in which ‘[t]he bore 27 comprises a first bore section 31, a second bore section 32,’ etc. delineated by shoulders 41, 42, etc. (Ex. 1019, 5:24– 43)” (Ex. 1018 ¶ 10); “Brånemark describes an osseous implantation device having body 1ʺ with first and second holding portions 21ʺ, 31ʺ and ‘an inner through bore with a first portion 4ʺ in the first holding portion and a second portion 5ʺ in the second holding portion.’” Ex. 1021, 4:44–46” (id. ¶ 12); and Ray discloses surgical calipers including “handle 12 having ‘stepped cylindrical bore 14,’” wherein “[c]ollar 20 of a shaft inserted in the bore ‘rests against a step of the bore 14’ (2:14–15)” (id. ¶ 13). Patent Owner responds that Mr. Dominguez’s examples “that allegedly show a single bore encompassing two or more stepped-diameter holes or a counterbore . . . . are specific to these references and divorced from the disclosures of the ’166 patent.” Sur-Reply 7. Insofar as the ’166 patent makes no mention of the term “bore” outside the claims, and Mr. Dominguez’s examples are all taken from the field of orthopedic surgery, we do not find this argument persuasive. Patent Owner further appears to contend that exemplary references to a “cylindrical stepped down bore” or a “stepped cylindrical bore” are too specific to be within the scope of the term “bore.” Sur-Reply 7–8. As these terms merely describe species within a larger genus, and Patent Owner presents no cogent reason to exclude them, we do not find this argument availing. Relatedly, we are also not persuaded by Patent Owner’s argument that “the prior art treats a ‘bore’ as an element that is distinct from a ‘counterbore.’” Id. at 8. Rather, we credit Mr. Dominguez’s testimony that “[a] counterbore is not a structure unto itself, a counterbore is part of a larger structure” as exemplified by numerous examples including Laps (Ex. 1028 ¶ 33 (sensor assembly wherein “bore 16 includes a counterbore 18”)); Martinez (Ex. 1029, 3:61 (surgical cutting instrument wherein “bore 56 has a counterbore 64”)); Zang (Ex. 1030, 2:49 (bone anchor having a “bore [that] includes a counterbore”)); Ledet (Ex. 1022, 29:3–5 (vertebral fixation plate having “through holes . . . . countersunk, or counterbored to accommodate the head of a bone screw”)); Seo (Ex. 1031, 3:45 (chair leg employing “counterbored bore 23”)); and Exner (Ex. 1032, 2:16 (extrusion press including “counterbored axial bore 6”)). Ex. 1018 ¶¶ 17–23. That a reference may refer to a figure as showing “bore 103” with “counterbore 105 . . . formed on one end” does not indicate that they are distinct structures as Patent Owner contends, but merely that the focus of each term is directed to the entire bore or to a particular aspect of the bore, i.e., its counterbore. See” slip op. at 22

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner subsequently proposed an alternative definition, as a person having “[a] Bachelor’s Degree in biomedical and/or mechanical engineering or similar training and . . . at least three years of experience with implant devices used for internal fixation of bones.” POR 5 (citing Ex. 2012 ¶¶ 32–33). According to Patent Owner, “[t]his hypothetical person would be capable of performing various design tasks and would understand the basic mechanical features and operation of orthopaedic implant devices [and] have an appreciation for orthopaedic fusion techniques and the medical issues and concerns faced by a doctor/surgeon charged when performing operations to implant orthopaedic devices.” Id. Despite some differences in wording, Patent Owner asserts (and Petitioner does not contest) that any “distinction between the parties’ proposed definitions of a POSITA does not affect the arguments set forth herein.” Id. (citing Ex. 2012 ¶ 34). Consistent with this view, we find the parties’ constructions equally applicable in light of the prior art of record and the disclosure of the ’166 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). We adopt, for convenience, Petitioner’s definition, but our analysis does not change depending on which of the two articulations are applied here. H.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “one of ordinary skill in the art would understand that “bore,” as used in the context of claims 1 and 12, encompasses a multi-diameter passage, and in particular, one having stepped longitudinal cross sections such as that shown in Cognet’s Figure 1. See generally DI 11–13. For the reasons that follow, we conclude that one of ordinary skill in the art would have understood “bore” as such. Relying on the testimony of Mr. Dominguez, Petitioner initially proposed a construction of “bore” as “a usually cylindrical hole made by or as if by the turning or twisting movement of a tool.” Pet. 16 (citing Ex. 1002 ¶ 58). Petitioner’s proposal relied on Mr. Dominguez’s testimony that “[a] bore is a cylindrical hole made by the spinning rotation of a twist drill cutting tool. It is typically made by removing material from a solid or hollow object, similar to a tunnel or orifice.” Ex. 1002 ¶ 58. Pointing to its annotation of Cognet’s Figure 1, above, Patent Owner argued that that the term “bore” excludes a tunnel made by “two adjacent bores.” See Prelim. Resp. 21–25. In view of the then-available evidence, we provisionally construed “bore” as a hole or passage made by or as if by the turning or twisting movement of a tool such that its interior walls have cylindrical lateral cross-sections, and which do not exclude holes or passages having tapered or stepped longitudinal cross-sections. DI 13.” slip op. at 19

  Patent outcomesUS 11,298,166 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,298,166
• Sonos, Inc. v. Google LLCSome claims unpatentable
  PTAB · Nov 1, 2024 · IPR2023-00806 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–3, 5, 9–12, and 15–18 are unpatentable as obvious over either Roberts and Asokan or Suumäki; claims 6–8 and 19 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner, supported by Dr. Schmidt’s testimony, has proposed that a person of ordinary skill in the art at the time of the invention “would have had a degree in computer engineering, computer science, or a similar discipline, along with 2 years of professional experience in the fields of networking and network-based systems or applications, or an equivalent level of skill, knowledge, and experience,” and would have been “aware of and generally knowledgeable about how devices were provisioned onto wireless networks, along with standards applicable to well-known methods for communication such as Wi-Fi, Bluetooth, and NFC available at the time the ’615 patent was filed.” Pet. 18 (citing Ex. 1003 ¶¶ 37–39). Patent Owner does not challenge the qualifications proposed by Petitioner for a person of ordinary skill in the art. See generally PO Resp.; PO Sur-reply. We find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this Decision.” slip op. at 8

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

    “In the Institution Decision, we considered the assertions of Petitioner that the terms of the ’615 patent’s claims do not require further construction and can be afforded their plain and ordinary meaning. Dec. to Inst. 7 (citing Pet. 14; Ex. 1003 ¶¶ 79–82). Patent Owner also does not assert any express constructions. See generally PO Resp.; PO Sur-reply. Given the lack of controversy, we need not explicitly adopt or discuss any explicit constructions in this decision. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 9

  • BurdenMixed

    “that the section of the Petition discussing claim 6 does not discuss the combination of embodiments; it merely asserts what would have been obvious in the context of the cited embodiment. See Pet. 36–37. See, e.g., In re Stepan Co., 868 F.3d 1342 (Fed. Cir. 2017), headnote 4, “Whether a rejection of a patent claim for obviousness is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.” See also, Intuit Inc. v. Samesurf, Inc., No. IPR2023-00342, 2024 WL 3165359, at *31 (P.T.A.B. June 25, 2024) (Distinguishing Stephan for simultaneous actions). Claim 6 depends on claim 1, and any discussion of claim 6, explaining its obviousness, must consider the obviousness case for the independent claim in its analysis. Petitioner’s observation that Roberts is agnostic as to how network configuration information is conveyed does not relieve Petitioner of the requirement of making that case in the Petition. See 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104(b)(4).” slip op. at 21

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

    “We agree with Patent Owner’s argument. Although Petitioner is correct that Roberts discloses different embodiments for conveying configuration information, those embodiments are distinct. See Ex. 1004, that the section of the Petition discussing claim 6 does not discuss the combination of embodiments; it merely asserts what would have been obvious in the context of the cited embodiment. See Pet. 36–37. See, e.g., In re Stepan Co., 868 F.3d 1342 (Fed. Cir. 2017), headnote 4, “Whether a rejection of a patent claim for obviousness is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.” See also, Intuit Inc. v. Samesurf, Inc., No. IPR2023-00342, 2024 WL 3165359, at *31 (P.T.A.B. June 25, 2024) (Distinguishing Stephan for simultaneous actions). Claim 6 depends on claim 1, and any discussion of claim 6, explaining its obviousness, must consider the obviousness case for the independent claim in its analysis. Petitioner’s observation that Roberts is agnostic as to how network configuration information is conveyed does not relieve Petitioner of the requirement of making that case in the Petition. See 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104(b)(4).” slip op. at 20

  Patent outcomesUS 11,050,615 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,050,615
• Life Spine, Inc. v. Globus Medical, Inc.Some claims unpatentable
  PTAB · Mar 20, 2024 · IPR2022-01434 · APJ Cynthia M Hardman · IPR · Final written decision

  Claims 1–9 and 15 are unpatentable over Chung and Olmos-based obviousness grounds; claims 10–14 were not shown unpatentable because the asserted references did not teach the claimed complementary relationship.

  RulingsFinal written decision

  • Expert testimonyOther

    “improperly incorporates-by-reference 12 pages of expert testimony via a single sentence.” PO Sur-reply 16 n.2 (citing Pet. Reply 17, which in turn cites Ex. 1026 (Hatch Decl.) ¶¶ 49–66). We find that many of the paragraphs within the cited range (i.e., Hatch Declaration paragraphs 49–66) appear to have a tenuous connection to the proposition for which Petitioner cites these paragraphs. See Pet. Reply 17. That said, we find that paragraphs 53–55 directly relate to Petitioner’s proposition in the Reply, i.e., that “Petitioner’s experts explain why a [person of ordinary skill in the art] would rely on a cross-sectional view over a perspective view for making the determination in question, because only the cross-sections provide the needed side view directly orthogonal to the positions of the yellow expansion portion and the end of the dovetail.” Id. Accordingly, we find that paragraphs 53–55—the only paragraphs we cite from Petitioner’s range in reaching our conclusion—are not improperly incorporated by reference into Petitioner’s Reply.” slip op. at 66

  • Strike new argumentNew argument consideredDenied

    “provide Petitioner an opportunity to respond under the new construction, and decline to strike Petitioner’s relevant argument and evidence. Cf. Axonics, 75 F.4th at 1383 (“[W]hen the Board adopts a new claim construction following institution, an IPR petitioner must have adequate notice and an opportunity to respond under the new construction.”). Like in Axonics, in its new arguments on Reply, Petitioner here relies on the same embodiment from the same prior art reference that it relies on in the Petition to support the same legal argument, i.e., that Olmos’s Figure 16 embodiment discloses the “complementary with one another” limitation of challenged claims 10– 14. See Axonics, 75 F.4th at 1384; see also Apple Inc. v. Andrea Elecs. Corp., 949 F.3d 697, 706 (Fed. Cir. 2020) (permitting petitioner to elaborate in reply on an unpatentability theory presented in the petition). Moreover, we permitted Patent Owner to file (and it indeed did file) a sur-reply brief and expert declaration that addressed Petitioner’s new obviousness theories. Accordingly, both parties had adequate notice of our preliminary construction and an opportunity to respond under that new construction. For these reasons, we deny Patent Owner’s motion to strike.” slip op. at 124

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “from the expansion portion. We agree with Patent Owner that the wording of this limitation as a whole requires that the “extension necessarily must protrude beyond a longitudinal end of the expansion portion.” Id. at 11. We also agree with Patent Owner that “[u]nder Petitioner’s tenuous theory, an extension in any direction except 90 or 180 degrees would satisfy the claim language since any such direction has a so-called ‘longitudinal component.’” Id. at 13. For these reasons, we disagree with Petitioner’s argument that the purported “longitudinal component” of Chung’s extension satisfies limitation 1[h].” slip op. at 55

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed

    “would have been motivated to add an extension to the Figure 16 embodiment because “an integrally-formed extension advantageously requires fewer parts, which facilitates both manufacturing and use.” Pet. 118. We agree with Patent Owner that this argument is unavailing. PO Resp. 50. Petitioner’s combination entails adding an extension (from Figure 8) to an embodiment lacking one (Figure 16). We agree with Patent Owner that adding a new component (whether separately or integrally) can in some instances complicate manufacturing/assembly and increase costs. See id. (citing Ex. 2013 (Culbert Decl.) ¶ 115). Petitioner has not sufficiently demonstrated that the proposed combination in this instance would reduce complexity or facilitate the manufacturing process. Accordingly, we do not rely on this argument offered by Petitioner.” slip op. at 106

  Patent outcomesUS 8,845,731 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,845,731
• Wirtgen America, Inc. v. Caterpillar Inc.Some claims unpatentable
  PTAB · Mar 12, 2024 · IPR2022-01397 · APJ Matthew S Meyers · IPR · Final written decision

  Claims 1–12 are unpatentable under § 103 over Willis and Xing, with claim 8 also unpatentable over Willis, Xing, and Laux; claim 13 was not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on the arguments presented and the cited references, we find Petitioner’s unopposed definition of the level of ordinary skill reasonable, supported by the prior art evidence, the Specification, and Dr. Stein’s Declaration testimony (Ex. 1003 ¶¶ 21–24), and, for purposes of this Decision, adopt it as our own.” slip op. at 21

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

    “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). slip op. at 22

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

    “Petitioner asserts that “it was known that implementing a variable transmission in a milling machine could improve fuel efficiency” (id. at 33–34), and relying on the declaration testimony of Dr. Stein, reasons that one of ordinary skill in the art “would have recognized that using a hydromechanical CVT permitted controlling an engine to a speed that minimizes fuel consumption for a given load while controlling transmission gear ratios to achieve desired transmission output speeds that maximize machine performance.” Id. at 34 (citing Ex. 1003 ¶ 66). Petitioner further asserts that Xing taught a method of controllably adjusting a CVT to further improve fuel efficiency without impacting machine performance. Supra [Pet. 18–24]. Thus, implementing a CVT and control method like that taught by Xing in Willis’s milling machine would have been a matter of combining prior art elements according to known methods to yield predictable results. Id. (citing Ex. 1003 ¶ 66). Relying on the declaration testimony of Dr. Stein, Petitioner takes the position that one of ordinary skill in the art “would have expected to successfully incorporate Xing’s teachings, including those related to CVTs, engines, transmission control algorithms, and associated sensors, into Willis’s milling machine” because it would have been no more that the combination of “prior art elements according to known methods to yield predictable results.” Pet. 34 (citing Ex. 1003 ¶¶ 65–66); see also id. at 34–35 (“This combination would further apply a known technique and hardware to a known device that was ready for improvement, predictably yielding the result of the expected improvement.”). Petitioner concludes that one of ordinary skill in the art “would have expected that such a combination would improve the fuel consumption and energy efficiency of Willis’s milling machine, while maintaining desired rotor speed during operation.” Id. at 35. We find, on the complete trial record, that a person having ordinary” slip op. at 28

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “Owner’s counterarguments and find, on the complete trial record, that Petitioner demonstrates, by a preponderance of the evidence, that the combination of Willis and Xing teaches or suggests “determining an engine load of the engine” and “adjusting an engine speed of the engine based on the engine load” as recited by limitation 1[b], and recited in part by limitation 1[c]. Petitioner explains that Xing’s controller 116 “receive[s] signals from sensors communicatively coupled to the controller, such as torque sensor 122 and engine speed sensor 124” (Pet. 45 (citing Ex. 1006, 8:16–40)), and [b]ased on those signals, the controller in Xing evaluated power losses from the transmission and other power consuming components at different candidate operating speeds, measured engine load to determine the work output demanded of the machine, and independently set engine speeds and transmission ratios to minimize fuel consumption while achieving desired performance. Id. at 46 (citing Ex. 1006, 8:67–9:3, 9:9–17). We find Petitioner’s explanation to be consistent with Xing’s disclosure that the current load power requirement for the work vehicle may be determined indirectly by calculating the current engine power (Pengine) and the current power loss (Ploss) for the work vehicle 10. For example, as indicated above, the controller 116 may be configured to continuously monitor the engine speed and the engine torque (via sensors 122, 124), thereby allowing for the current engine power to be calculated by the controller 116. Ex. 1006, 9:37–44; see also id at 9:27–31 (“The relationship between the load power requirement and the power produced by the engine 22 of the work vehicle 10 is provided” by Equation 1: “Pengine = Pload + Ploss.”).” slip op. at 34

  Patent outcomesUS 9,975,538 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,975,538
• Wirtgen America, Inc. v. Caterpillar Inc.Some claims unpatentable
  PTAB · Mar 5, 2024 · IPR2022-01395 · APJ James J Mayberry · IPR · Final written decision

  Claims 1–15, 17–33, 35–42, and 44 are unpatentable under § 103; claims 45–61 and 63 were not shown unpatentable because the petition failed to identify corresponding structure for means-plus-function limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner contends “[a] POSITA in the field of the ’995 patent (mobile construction machines) would have had knowledge of the literature concerning machine design, including hydraulic systems and their use to steer and position wheels/tracks, before July 2004.” Pet. 15–16 (citing Ex. 1003 ¶¶ 27–28). Petitioner further contends that a person having ordinary skill in the art would have had: (i) a bachelor’s degree (or equivalent) in mechanical engineering (or a similar field) and at least two years of experience working on mobile construction machine design (or in a similar field); or (ii) seven years of experience working on mobile construction machine design (or in a similar field). Id. at 16 (citing Ex. 1003 ¶¶ 27–28). Patent Owner does not address the level of ordinary skill in the art in its Response. Dr. Klopp states that “[w]hile I do not opine on the correctness of [Petitioner’s] description [of the level of ordinary skill], I apply [Petitioner’s] description of a person of ordinary skill in the art for the purposes of my declaration.” Ex. 2004 ¶ 26. Based on the prior art, the sophistication of the technology at issue, and Mr. Orr’s Declaration testimony, we adopt Petitioner’s undisputed definition of the level of ordinary skill. We determine that this definition is consistent with the prior art of record and the skill reflected in the Specification of the ’995 patent. Ex. 1003 ¶¶ 27–28; Ex. 1001 (describing a mobile construction machine); Exs. 1005–1015 (disclosing aspects of mobile construction machine design).” slip op. at 27

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “1. Means-plus-function terms Independent claim 45 uses “means-plus-function” language, reciting several such clauses. Ex. 1001, 14:31–50; see 35 U.S.C. § 112 ¶ 6 (we cite to the pre-AIA version of the statute applicable to the challenged claims). Means-plus-function claiming occurs when a claim term is drafted in a manner that invokes 35 U.S.C. § 112 ¶ 6, which states: An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. See 35 U.S.C. § 112 ¶ 6; Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347 (Fed. Cir. 2015) (en banc). “Determining the claimed function and the corresponding structure for a claim limitation written in means-plus-function format are both matters of claim construction.” WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1347 (Fed. Cir. 1999) On the complete record, we have not been directed to any dispute between the parties whether § 112 ¶ 6 applies to the recited means-plus-function clauses in the Challenged Claims. Pet. 17; PO Resp. 9.” slip op. at 28

  • BurdenNot shown unpatentable

    “Our Rules require that, “[w]here the claim to be construed contains a means-plus-function [limitation] . . ., the construction of the claim must identify 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); cf. 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 32

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

    “and find, on the complete trial record, that Petitioner demonstrates, by a preponderance of the evidence, that a person of ordinary skill in the art would have had reason to modify the Bitelli to allow for rear wheel steering. First, we find that the complete record support’s Petitioner’s basis that Bitelli would have a rear wheel scraping problem. See Pet. 37. Bitelli ’037 expressly states that “[o]ne limitation shown by the machine described in the aforementioned patent is that when the rear wheels or tracks are set in their retracted position inside the frame, when turning they scrape the ground with considerable resistance.” Ex. 1014 ¶ 12. The exhibit makes clear that the “aforementioned patent” is a patent application with the number VI98U000098. Id. ¶ 11. The trial record also makes clear that Bitelli, a published European patent application, claims priority to that patent application. See Ex. 1011, code (30) (claiming priority to Italian application VI980098 U). As such, the machine in Bitelli is the machine with the wheel scraping problem identified in Bitelli ’037. See also Pet. Reply 9 (showing images from Ex. 1011 and Ex. 104211 (the Italian application referenced in Ex. 1014 depicting the same machine). Accordingly, we do not find an evidentiary gap in Petitioner’s contentions. Cf. PO Resp. 19–20; PO Sur-reply 11–12.” slip op. at 41

  Patent outcomesUS 7,523,995 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,523,995
• Wirtgen America, Inc. v. Caterpillar Inc.Some claims unpatentable
  PTAB · Mar 5, 2024 · IPR2022-01394 · APJ James J Mayberry · IPR · Final written decision

  Claims 18, 21–29, and 31–35 are unpatentable over the stated § 103 grounds; claims 30, 45, and 49–63 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner contends that a person having ordinary skill in the art “in the technical field of the ’995 patent (mobile construction machines) would have had knowledge of the technical literature concerning machine design, including hydraulic and mechanical systems and their use to steer and position wheels or tracks, before July 2004.” Pet. 15 (referencing Ex. 1003 ¶¶ 35–36). Petitioner further contends that a person having ordinary skill in the art would typically have had: (i) a bachelor’s degree (or equivalent) in mechanical engineering (or a similar field) and at least two years of experience working on mobile construction machine design (or in a similar field); or (ii) seven years of experience working on mobile construction machine design (or in a similar field). Id. (referencing Ex. 1003 ¶¶ 35–36). Patent Owner does not address the level of ordinary skill in the art in its Response. Dr. Klopp states that “[w]hile I do not opine on the correctness of [Petitioner’s] description [of the level of ordinary skill], I apply [Petitioner’s] description of a person of ordinary skill in the art for the purposes of my declaration.” Ex. 2004 ¶ 26. Based on the prior art, the sophistication of the technology at issue, and Mr. Orr’s Declaration testimony, we adopt Petitioner’s undisputed definition of the level of ordinary skill. We determine that this definition is consistent with the prior art of record and the skill reflected in the Specification of the ’995 patent. Ex. 1003 ¶¶ 35–36; Ex. 1001 (describing a mobile construction machine); Exs. 1005–1015 (disclosing aspects of mobile construction machine design).” slip op. at 24

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “Independent claim 45 uses “means-plus-function” language, reciting several such clauses. Ex. 1001, 14:31–50; see 35 U.S.C. § 112 ¶ 6.10 10 We cite to the pre-AIA version of the statute applicable to the Challenged Claims. Means-plus-function claiming occurs when a claim term is drafted in a manner that invokes 35 U.S.C. § 112 ¶ 6, which states: An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. See 35 U.S.C. § 112 ¶ 6; Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347 (Fed. Cir. 2015) (en banc). The parties do not dispute that § 112 ¶ 6 applies to the recited means-plus-function clauses in the Challenged Claims. See Pet. 16–20; PO Resp. 5–6 (implying that § 112 ¶ 6 applies in arguing that Petitioner did not satisfy the requirements for construing certain means-plus-function terms).” slip op. at 25

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownDecided for petitioner

    “Turning to the corresponding structure, the Specification of the ’995 patent identifies only one structure that performs the recited function— actuator 44. The Specification states that “second actuator 44 is associated with the support device 40 and is adapted to maintain the same rotational direction of the one ground engaging unit 20 in each of the projecting and retracted positions.” Ex. 1001, 4:44–47; see id. at 4:56–60 (“[S]econd actuator 44 is connected to the lifting column 46 and is adapted to cause at least a portion of the lifting column 46 to rotate about a lifting column axis 48 that is oriented generally vertically relative to the work machine.”). The Specification at least suggests that actuator 44 does not need to be a rotary actuator, or, at least, that a linear actuator is an equivalent structure to a rotary actuator. For example, in describing “one of the preferred embodiments,” the Specification describes that “at least one of the first and second actuators 42, 44 is a rotary actuator,” suggesting that actuator 44 is not necessarily a rotary actuator. Ex. 1001, 4:61–62; see also id. at 5:17–21 (“These embodiments may be advantageously combined by employing a rotary actuator as described above as either or both of the first and second actuators 42, 44, and by positioning these actuators at the specified longitudinally spaced apart locations.”), 5:21–24 (“[I]t may also be preferable that at least the second actuator 44 be implemented using the rotary actuator construction and placed at the upper portion of the lifting column 46.” (emphasis added)); but see id. at Fig. 3 (depicting actuator 42 as a linear actuator). Accordingly, we find that the corresponding structure identified in the Specification for the recited function is a rotary or linear actuator. As such, we do not agree with Petitioner’s construction limiting the actuator to a rotary actuator. We also do not agree with Petitioner that the second actuator must be at the top portion of the lifting column. The Specification clearly identifies that the second actuator may be located “on the lifting column” “spaced apart from the first actuator 42,” and that locating the second actuator at the upper portion of the lifting column is merely a preferred location. See Ex. 1001, 5:8–24.” slip op. at 29

  • Strike new argumentNew argument disregardedDecided for patent owner

    “evidence, that a person having ordinary skill in the art would have modified Piccoli’s teachings to connect the second end of the first actuator to the swing arm as required by claim 30. In the Petition, the only evidence to support its modification is conclusory testimony from Mr. Orr. This testimony is accorded no weight. See Xerox Corp., IPR2022-00624, Paper 9. With respect to Petitioner’s reliance on Dubay as state-of-the-art evidence (for the first time in the Reply), we agree with Patent Owner that this argument is an improper new argument. In determining whether an argument is a proper argument in reply, we look to see if the Reply argument is responsive to an argument from Patent Owner and expands on a position in the Petition. See Rembrandt Diagnostics, LP v. Alere, Inc., 76 F.4th 1376, 1384 (Fed. Cir. 2023) (“[W]e have held that a reply may be proper if it is responsive and simply expands on previously raised arguments.”). Or, if Petitioner relies on previously unidentified disclosure “to make a meaningfully distinct contention.” Id. at 1383 (“[W]e held that a petitioner who asserted in its reply previously unidentified prior-art disclosures ‘to make a meaningfully distinct contention’ was impermissibly raising a new theory of unpatentability.”). We find that Petitioner’s argument in reply is closer to the later situation. Here Petitioner does not expand on a position from the Petition that Patent Owner criticizes based on the merits of the contentions. Instead, Petitioner supplements it contentions by arguing that the linear actuator does not have to be attached to the lifting column to retract and extend Volpe’s leg assembly, and by citing to Dubay when Patent Owner argues that Petitioner provides no supporting evidence for its contentions. These responses are the type of “meaningfully distinct contention[s]” that signal that Petitioner is augmenting deficient contentions in the Petition with new arguments.” slip op. at 61

  Patent outcomesUS 7,523,995 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,523,995

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.