• Aurobindo Pharma USA, Inc.No claims unpatentable
  PTAB · Dec 28, 2018 · IPR2017-01648 · APJ Devon Zastrow Newman · IPR · Final written decision

  Claims 1–25 were not shown unpatentable over Timmins and Cheng because Petitioner did not establish that the combination would have targeted the claimed mean Tmax range.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “In the Patent Owner Response, Patent Owner acknowledged the Board’s characterization of the knowledge of an ordinarily skilled artisan as consistent with the proposals of both parties (PO Resp. 12–13), and neither party further addressed the proper level of ordinary skill in the art or disagreed with our characterization from the Institution Decision. See PO Resp., Reply. Our determination regarding the patentability of the challenged claims does not turn on the differences between the parties’ definitions. We adopt Petitioner’s assessment, but note that our conclusions would be the same under Patent Owner’s assessment. C. Testimony of Dr. Akhlaghi” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We agree with Petitioner that Dr. Akhlaghi’s qualifications and deposition testimony, when read in context, indicate that Dr. Akhlaghi is sufficiently experienced to opine on the knowledge of one of skill in the art at the time of the ’866 patent. As noted in the August 13, 2018 update to our Trial Practice Guide: An expert witness must be qualified as an expert by knowledge, skill, experience, training, or education to testify in the form of an opinion. Fed. R. Evid. 702. There is, however, no requirement of a perfect match between the expert’s experience and the relevant field. SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010). A person may not need to be a person of ordinary skill in the art in order to testify as an expert under Rule 702, but rather must be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008). See Notice of Update to Office Patent Trial Practice Guide, 83 Fed. Reg. 156, (Aug. 13, 2018) (text of update available at https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Pr actice_Guide.pdf). In addition, we are well able to consider the value of an expert opinion and afford it appropriate weight. Perreira v. Secretary of the Dept. of HHS, 33 F.3d 1375, 1377 n.6 (Fed. Cir. 1994) (“An expert opinion is no better than the soundness of the reasons supporting it.”) D. Claim Interpretation” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for patent owner

    “Tmax” In our Institution Decision, we noted that the term “Tmax” appears in each of the challenged claims, and that both parties agreed that Tmax should be construed as stated in the Specification: “the time period which elapses after administration of the dosage form at which the plasma concentration of the drug attains the highest plasma concentration of drug attained within the dosing interval (i.e., about 24 hours).” Inst. Dec. 7 (citing Pet. 24; Prelim Resp. 18; Ex. 1001, col. 7, ll. 49–53). We concluded that the proposed definition was consistent with the Specification and defined the claim term with reasonable clarity, deliberateness, and precision, and we adopted the parties’ construction. Neither party addressed the issue of construction of Tmax in further briefing, but the parties disagree about how Dr. Akhlaghi applied the definition in her testimony. See, eg., Pet. Reply 9–10. For purposes of analyzing the patentability of the challenged claims, we continue to interpret the term as “the time period which elapses after administration of the dosage form at which the plasma concentration of the drug attains the highest plasma concentration of drug attained within the dosing interval (i.e., about 24 hours),” because that definition is consistent with the Specification, and because the parties themselves agreed to the definition of Tmax. Inst. Dec. 7. E. Overview of the Prior Art slip op. at 11

  • BurdenNot shown unpatentable

    “Based on our review of the record, we determine that Petitioner has not shown sufficiently that combining the teachings of Timmins and Cheng as Petitioner contends would have resulted in a dosage form that provides a mean Tmax of metformin from 5.5 to 7.5 hours after administration.” slip op. at 19

  Patent outcomesUS 6,866,866 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,866,866
• Donghee America, Inc. / Donghee Alabama, LLC v. Plastic Omnium Advanced Innovation And ResearchAll claims unpatentable
  PTAB · Dec 11, 2018 · IPR2017-01605 · APJ Christopher M Kaiser · IPR · Final written decision

  Claims 1–3, 7, 11, 12, and 14 are unpatentable: claims 1–3, 12, and 14 are anticipated by Linden, and claims 7 and 11 are obvious over Linden and Hata.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “article whose surface has at least one empty or concave part.” Id. at 11 (citing Ex. 1001, 1:66–67; Ex. 1007 ¶ 15). Patent Owner agrees. PO Resp. 15. The ’253 patent states that “[t]he term ‘hollow body’ is understood to mean any article whose surface has at least one empty or concave part.” Ex. 1001, 1:66–67. Where an inventor defines specific terms used to describe an invention, we will give effect to those definitions, as long as they are set out “with reasonable clarity, deliberateness, and precision,” “so as to give one of ordinary skill in the art notice of the change” in meaning. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Here, the phrase “is understood to mean,” as used in the ’253 patent, signals that the inventor presents a clear, deliberate, and precise definition. Accordingly, we interpret “hollow body” as having the definition given it in the ’253 patent, “any article whose surface has at least one empty or concave part.”” slip op. at 6

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

    “supporting its proposed construction of “incorporate” as “insert.” First, Petitioner argues that the language of the ’253 patent requires a construction of “incorporating” as encompassing “inserting” rather than as limited to “attaching.” Reply 2–4. Both parties argue that the “incorporating” recited in the challenged claims must occur before the mold closes to form the hollow body. PO Resp. 16; Reply 2–3. We agree. Ex. 1001, 6:2–14 (“. . . after said step of incorporating, closing said mould . . .”). Thus, it is important to note the processes that the ’253 patent describes as occurring before, during, and after mold closure. Because “incorporating” must occur before mold closure, the process of “incorporating” may not be limited to any process that the patent describes as occurring during or after mold closure. Petitioner is correct that the ’253 patent describes a process in which a preassembled structure for supporting an accessory “may . . . be fastened by welding to the wall of the hollow body, upon closing the mould,” i.e., during, not before, mold closure. Ex. 1001, 4:23–30. Thus, the language of the ’253 patent does not support construing the term “incorporating” as limited to “attaching.” Petitioner also argues that both parties agreed in the related infringement suit in District Court that the proper construction of “incorporating” under the Phillips standard, used in that forum, was “inserting.” Reply 7–8 (citing Ex. 1010, at Ex. A, 4). Specifically, in that litigation, Patent Owner agreed that the correct construction of “incorporating at least one of an accessory or a duct within the hollow body” was “inserting an accessory or duct into the hollow body.” Ex. 1010, at Ex. A, 4. Here, we apply the broadest-reasonable-interpretation standard. 37 C.F.R. § 42.100(b) (2016). “The broadest reasonable interpretation of a claim term may be the same as or broader than the construction of a term under the Phillips standard. But it cannot be narrower.” Facebook, Inc. v. Pragmatus AV, LLC, 582 F. App’x 864, 869 (Fed. Cir. 2014) (non-precedential). Here, for the term “incorporating,” Patent Owner’s proposed broadest reasonable interpretation (“attaching”) is narrower than the Phillips construction Patent Owner has advanced (“inserting”). Thus, “attaching” cannot be the broadest reasonable interpretation of “incorporating.” Other than Patent Owner’s proposed “attaching” construction, the only construction the parties have proposed either in this case or in the related District Court case is Petitioner’s proposed “inserting” construction. PO Resp. 15–20 (discussing only “inserting” and “attaching” constructions); Reply 2–9 (Petitioner arguing in favor of “inserting”); Ex. 1010, at Ex. A, 4 (both parties proposing “inserting”). The ’253 patent supports such a construction, because it describes at least some of its embodiments as involving only insertion of an object between the sheets that will form the hollow body before mold closure. Ex. 1001, 4:23–30. Accordingly, for the foregoing reasons, we adopt Petitioner’s proposed construction of “incorporating” as “inserting.”” slip op. at 10

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “Finally, Patent Owner directs us to the testimony of Professor Tim Osswald as support for its view that “incorporate” should mean “attach.” PO Resp. 16 (citing Ex. 2001 ¶¶ 40–42). In relevant part, this testimony states that, “[a]fter reading the specification of the ’253 patent, one of ordinary skill in the art would understand and interpret the word ‘incorporating’ to mean ‘fastening’ or ‘attaching’ so that the accessory or duct becomes part of the hollow body.” Ex. 2001 ¶ 42. Professor Osswald does not cite any evidence in support of his testimony. “[C]onclusory, unsupported assertions by experts as to the definition of a claim term are not useful.” Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005) (en banc). Accordingly, we give little weight to Professor Osswald’s statement regarding the proper construction of “incorporate.” See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he [PTAB] is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations . . . .” (citations omitted)).” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “preform which has at least one opening for that purpose, to be applied to the inside surface of the wall of the expanded hollow body.” Id. at 3:62–4:3. Patent Owner argues that this teaching is insufficient to disclose attaching the surge cup to the wall of the hollow body before the mold closes. PO Resp. 23–24. We agree that Linden does not teach attaching its accessory to the inside wall of the fuel tank before the mold closes around the preform. Instead, in Linden, the mold halves are closed around the preform and the mandrel, and “a suitable blowing agent . . . is introduced under pressure” through the mandrel, causing the preform to expand to press “against the inside wall defining the mold cavity,” and only then is the holding means for the accessory displaced to be brought into contact with the inner wall of the expanded preform, welding the holding means to the wall. Ex. 1003, 7:27–55, 8:11–29, Figs. 1–3. But, as discussed above, we disagree with Patent Owner about the proper construction of “incorporating” in the challenged claims. Claim 1 requires only that an accessory or a duct be “incorporat[ed] . . . within the hollow body” before mold closure occurs, and we construe “incorporating” to mean “inserting,” without requiring “attaching.” Thus, it is unimportant that Linden fails to teach attaching the surge cup to the wall before mold closure. All that is required is that Linden disclose inserting the surge cup into the preform before mold closure, and Linden does disclose this. Id. at 3:62–4:3, 7:27–49, Figs. 1–3. The next question is whether Linden discloses “after said step of incorporating, closing [the mold] in a way which eliminates any interface between said at least one of said accessory or said duct and an external atmosphere outside of the hollow body.” As discussed above, Linden discloses closing the mold halves after placing the additional body within the preform. But Linden discloses that “[a]t its lower end the preform 28 is pressed around the mandrel 14 by virtue of closure of the mold halves 10a and 10b.” Id. at 7:40–42, Fig. 2. Because mandrel 14 is hollow, id. at 6:35–39; 6:46–54, it is not completely clear that closure of Linden’s hollow body around mandrel 14 necessarily eliminates any interface between the additional body inside Linden’s hollow body and the atmosphere outside the hollow body. On the other hand, the closure of the mold described in the ’253 patent occurs with blowing nozzle 6 “positioned between the two parts of the [mold],” and “blowing air is injected under pressure via the nozzle,” which is quite similar to the use of hollow mandrel 14 in Linden. Ex. 1001, 5:50–57. Given the similarity between Linden’s method and the method described in the ’253 patent, we determine that Petitioner has shown by a preponderance of the evidence that Linden discloses the limitation of claim 1 requiring the step of, “after said step of incorporating, closing [the mold] in a way which eliminates any interface between said at least one of said accessory or said duct and an external atmosphere outside of the hollow body.” The final question with respect to claim 1 is whether Linden discloses that the additional body incorporated within the hollow body “is supported by a preassembled structure which comprises at least one device configured to anchor said preassembled structure to an internal wall of the hollow body.” Petitioner argues that Linden’s “[h]olding means 24 is a preassembled structure” in which “leg members 44, 45” have “enlarged foot portion[s] 36.” Pet. 18 (citing Ex. 1003, 9:23–34). We agree. “[H]olding means 24 . . . substantially comprises first and second support or leg members 44, 45,” and “support or leg members 44, 45 are each provided with an enlarged foot portion 36 of substantially plate-like configuration.” Ex. 1003, 9:23–34. Even if Linden’s holding means 24 were not in the aggregate the recited “preassembled structure,” each leg member 44, 45, taken together with its respective foot portion 36 is. Ex. 1001, 4:26–28 (describing a “preassembled structure” as “for example, an arm provided with a tab for fastening to the wall of the hollow body”). Linden’s “foot portions 36 are pressed against the inside surface, which is still hot and thus plastic, . . . of the hollow body . . . thereby to produce a welded joint between the foot portions 36 and the inside surface.” Id. at 9:34–42. Petitioner has shown by a preponderance of the evidence that Linden discloses the limitation of claim 1 requiring that the accessory or duct be “supported by a preassembled structure which comprises at least one device configured to anchor said preassembled structure to an internal wall of the hollow body.”” slip op. at 19

  Patent outcomesUS 7,166,253 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 7,166,253
• Shenzhen Kean Silicone Product Co., Ltd. v. Pkoh Nyc, LLCSome claims unpatentable
  PTAB · Dec 3, 2018 · IPR2017-01327 · APJ Robert L Kinder · IPR · Final written decision

  Claims 1–7, 10–13, 20–22, 24, 26, 28–32, and 35–38 are unpatentable as obvious; claim 14 was not shown unpatentable over Cho.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Person of Ordinary Skill in the Art Petitioner’s expert, Mr. Goldman, proposes that a person of ordinary skill in the bottle/container field as of the time of the filing of the application that became the ’036 patent “would have a bachelor’s degree (or equivalent) in mechanical engineering and at least one or two years’ experience developing container technology.” Ex. 1014 ¶ 4. Patent Owner does not dispute Petitioner’s proposal, and based on the final record, we adopt it for purposes of this Decision.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededDecided for petitioner

    “The Specification of the ’036 patent describes “[t]he elastomeric material is . . . of an appropriate durometer, such as 40 Shore A, to make the squeeze bulb 200 substantially deformable yet resilient,” and the elastomeric material is preferably silicone. Ex. 1001, 2:54–63. Only the claimed wall portion of the receptacle is claimed to be “resiliently deformable.” Id. at 5:9–10. Nothing in the claim, however, precludes or requires any other portion of the receptacle (comprised of elastomeric material) from also being resiliently deformable. Id. at 4:47–48. Notably, the receptacle is claimed to be “flexible and resilient.” Id. Although the “flexible and resilient” receptacle and its wall being “resiliently deformable” are not necessarily identical, this distinction appears to be minor considering the written description of the ’036 patent. Based on the foregoing, we give each of these claim terms their plain and ordinary meaning as understood by a person or ordinary skill in the art. The surrounding claim language for each claim limitation focuses the scope of these terms such that any interpretation we could provide would not be as helpful in understanding the terms as the surrounding claim language. We determine that no terms require express construction for the purposes of this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedOther

    “6 In our decision, we give little weight to Petitioner’s evidence of “scores of popular baby bottles currently on the market,” because the design of these new bottles does not indicate the state of the art at the time the ’036 patent was filed. Further, Petitioner has failed to provide any corroborating testimony related to these new bottles—recent advertisements do not convince us of what a person of skill in the art would have considered at the time of filing. See Pet. Reply 11 (emphasis added) (citing Exs. 1022, 1023, 1024). We likewise give little weight to Petitioner’s uncorroborated article (Ex. 1026) from Wikipedia concerning “Baby bottle.” The record before us does not establish the origin and scientific basis for this evidence, and thus, we weigh Mr. Goldman’s testimony (Ex. 1021 ¶ 13) based on this evidence in a similar manner. See 37 C.F.R. § 42.65(a); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,763 (“Affidavits expressing an opinion of an expert must disclose the underlying facts or data.”). This sentence, standing alone, supports Mr. Fletcher’s conclusion that “an elastomeric, flexible silicone” could be used in the body of Cho’s bottle. See Ex. 1014 ¶ 30. Further, we find persuasive Petitioner’s arguments, supported by the testimony of Mr. Fletcher, that “silicone is primarily known for its elastic properties, and has been widely used in medical applications, including implants and storage containers, due to its chemical inertness, high heat resistance, flexibility and resistance for at least 60 years.” Pet. 30 (citing Ex. 1014 ¶ 34). Petitioner also supports its argument as to the suitability of silicone in consumer products, including in baby bottles, with a 1991 New York Times article that explains the elastomeric properties of silicone. Pet. 12; Ex. 1018, 2 (describing “rubbery silicone”), id. at 3 (“When baby gets a bottle these days, the nipple is a rubbery version of silicone.”). The fact that silicone could also possess other properties, or hardness, does not dissuade us from the determination that Cho, as a whole, teaches using a soft, resilient silicone in the body of the bottle.” slip op. at 20

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “At the outset, Mueller is analogous art and Patent Owner’s arguments to the contrary flip the analysis from focusing on the problem faced by the inventor of the ’036 patent to the “specific problem(s) found in Cho’s baby bottle.” First, Cho and Mueller are in the same field of endeavor as the claimed invention—dispensing containers—as admitted by Patent Owner. See PO Resp. 36. We need not address the second portion of the analogous art test, which focuses on whether the prior art “is reasonably pertinent to the problem with which the inventor was concerned.” In re Kahn, 441 F.3d 977, 986–87 (Fed. Cir. 2006). We do note, however, that the parties have both misapplied this second portion of the analysis. This analysis is focused on the problem faced by the inventor of the ’036 patent, not necessarily the problems addressed in the prior art references. Because neither party sufficiently addresses the problems faced by the inventor of the ’036 patent, and because Mueller and Cho are in the same field of endeavor as the claimed invention, we need not address the second portion of the analogous art test.” slip op. at 39

  Patent outcomesUS 7,959,036 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,959,036
• BMW Of North America, LLC / Bayerische Motoren Werke Aktiengesellschaft v. Theodore & Associates, LLCSome claims unpatentable
  PTAB · Nov 20, 2018 · IPR2017-01380 · APJ Mitchell G Weatherly · IPR · Final written decision

  Claims 2, 4, 19, 23, 24, 27–31, 35, 44–46, 48, and 49 are unpatentable under § 103; claims 3, 6, 8–10, 32–34, 36, 37, and 43 were not proven unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Mr. Kunselman, neither of whom supports his opinion with objective evidence. Pet. 35 (citing Ex. 1003 ¶ 20); PO Resp. 11–12 (referring to Mr. Kunselman’s opinion appearing at Ex. 2012 ¶¶ 15–21); Reply 20–21 (citing Ex. 1003 ¶ 20; Ex. 1061 ¶¶ 11–13). The level of skill is determined “in the art to which the claimed invention pertains,” 35 U.S.C. § 103, and neither party identifies that art explicitly. The Specification describes the field of invention as follows: “This invention is related to the field of automotive chassis design and more specifically to the area of interchangeable chassis for use with many models of vehicles.” Ex. 1001, 1:17–19. The Specification repeatedly refers to the chassis as having “universal” characteristics. Id. at Title, passim. The Specification also describes an advantage of its chassis as having “an ability to adapt to different bodies and body styles,” id. at 2:17–21, and criticizes prior art chassis designs that “are not readily adaptable to a wide variety of vehicles without forcing major and expensive redesign work for each vehicle,” id. at 1:29–33. Claims 43 and 44 expressly require that the claimed chassis be “universally adapted” for more than one type of vehicular configuration. Id. at 16:40–17:19. Based on these descriptions of the chassis and the express requirements in at least some of the claims at issue, we determine that the art to which the claimed invention pertains is the design of interchangeable chassis for use with many models of vehicles. We consider Mr. Kunselman’s testimony on the level of ordinary skill to be tied more closely to this relevant art of designing a chassis for use with many models of vehicles. Accordingly, we adopt Patent Owner’s definition of the level of ordinary skill for purposes of this Decision and evaluate priority of invention and obviousness from that perspective. We note that both Mr. Parker and Mr. Kunselman possess such a skill level. Ex. 1003 ¶¶ 6–13; Ex. 2012 ¶¶ 4–9.” slip op. at 7

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateNot entitled to earlier dateMixed

    “in claims 9 and 32–43 when it states that: “During attachment of the central backbone between the front and rear structures, the operational components (e.g., quill shaft for conventional vehicle, battery for electric or hybrid vehicle), are suitably coupled or connected.” Ex. 1006 ¶ 43. Based on this disclosure in the ’490 App, Mr. Kunselman opines without citing any objective evidence in support that: “The only suitable connection it could be is a wire and a cable. No other option has ever been used, not a metal tab, buss bar, or printed circuit board.” Ex. 2012 ¶ 75 (citing Ex. 1006 ¶ 43). Because the testimony cited by the parties on this issue leads to stalemate, we examine other aspects of the ’490 App and other evidence. Figure 16 of the ’490 App, reproduced at right, illustrates batteries located in a central structure that connects one end of a chassis with a generator to the other end of the chassis with an electric motor. Mr. Parker testifies that components such as wires connecting batteries were “conventional components” that were “well known” and “found in almost all vehicles decades before the ’163 patent was filed.” Ex. 1003 ¶ 61. Figure 16 illustrates batteries within the central spine of the plug-in hybrid chassis, along with the generator on one end, which would charge those batteries, and an e-motor on the other end, which would be powered by those batteries. Ex. 1006, Figure 16. Both experts agree that an electrical wire is a well known type of electrical connection that would be suitable. Ex. 1003 ¶ 61, Ex. 2012 ¶ 75. On the record before us, we determine that Figure 16 in the ’490 App, along with the description of batteries being “suitably coupled and connected” constitutes a description of an electrical connection spanning the batteries within the central spine and to components connected to opposite ends of that spine. This is especially true given the high degree of skill possessed by an ordinarily skilled artisan. Such an artisan would have no trouble recognizing that the ’490 App described using wire to connect batteries located within the central structure and that those wires would span the entire central spine. Ex. 2012 ¶ 75. For this reason, we determine that the wire features of claims 9, 32–37, and 43 are supported by the description in the ’490 App.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner

    “lexicographically define “chassis” but merely describes “another aspect of the universal chassis apparatus.” Reply 17–18. We agree. To act as its own lexicographer, a patentee must “clearly set forth a definition of the disputed claim term” other than its plain and ordinary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.Cir.2002). It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must “clearly express an intent” to redefine the term. Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed.Cir.2008); see also Kara Tech. Inc. v. Stamps.com, 582 F.3d 1341, 1347–48 (Fed.Cir.2009). At most, we understand the passage quoted by Patent Owner to be describing aspects of the “universal chassis apparatus” rather than providing a lexicographical definition of “chassis.” Petitioner also contends that an ordinarily skilled artisan would understand that “chassis” generally refers to the supporting structure or frame upon which the vehicle’s body, drive train, and suspension components are mounted. Reply 18 (citing Ex. 1003 ¶ 31). Petitioner notes that such an understanding is consistent with the definitions of “chassis” provided in two automotive industry dictionaries, one of which is provided by Patent Owner. Id. at 18–19 (citing Ex. 2024;5 Ex. 1063, 45:4–46:2, 46:20–47:14, 52:15–24; Ex. 1061, ¶ 25); see also Ex. 1052, 3 (defining “chassis” as the “[s]tructural lower part of a vehicle to which the running 5 Exhibit 2024 is an excerpt of a 1993 publication entitled “Auto Dictionary” in which “chassis” is defined as follows: “Lower structure of a vehicle to which the running gear and body are attached. On older cars, the chassis was a separate part of the vehicle with its own frame but, today, it is usually an integral part of the body structure.” Ex. 2024, 3. gear6 and body is attached.”). Mr. Kunselman testifies that “a variety of possible definitions for a chassis” exist. Ex. 1063, 74:12–14. Petitioner also points out that Patent Owner’s proffered definition for “chassis” conflicts with the Abstract of the ’163 patent, which indicates that “other components” including the suspension are attached to—and therefore separate from—a “vehicle chassis.” Reply 19 (citing Ex. 1001, Abstract, Ex. 1061 ¶ 26). Based on our review of the entire record, we conclude that “chassis” is neither precisely defined in the Specification nor understood by an ordinarily skilled artisan to have a precise universally agreed upon definition. Rather, “chassis” refers generally to the supporting structure or frame upon which the vehicle’s body, drive train, and suspension components are mounted.” slip op. at 22

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

    “Patent Owner’s argument is not persuasive for at least three reasons. First, claims 2 and 27 merely require that the backbone have two sections or segments that together define “a substantially T-shape as viewed from above.” Ex. 1001, 13:41–44 (claim 2), 15:15–24 (claim 27). Even with Brandt’s heel plate 40 positioned between the compartments holding battery units 24 and 28, we consider the combination of Brandt’s two compartments to be arranged in “a substantially T-shape as viewed from above” as recited in claims 2 and 27. Additionally, “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). Third, both Greil and Brandt describe locating batteries in the lower central portion of a vehicle. Ex. 1016, ¶ 38, Figure 5; Ex. 1018 ¶¶ 21– 22, Figure 1. Brandt explicitly suggests arranging batteries in a T-shape configuration. Ex. 1018 ¶¶ 21–22, Figure 1. We conclude that Petitioner has proven by a preponderance of evidence that the combination of Greil and Brandt renders claims 2, 4, and 27–31 unpatentable as obvious.” slip op. at 30

  Patent outcomesUS 9,045,163 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 9,045,163
• BMW Of North America, LLC / Bayerische Motoren Werke Aktiengesellschaft v. Theodore & Associates, LLCAll claims unpatentable
  PTAB · Nov 20, 2018 · IPR2017-01379 · APJ Mitchell G Weatherly · IPR · Final written decision

  Claims 2–4, 6, 8–10, 19, 23, 24, 27–37, 43–46, 48, and 49 are unpatentable as obvious under § 103.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner

    “lexicographically define “chassis” but merely describes “another aspect of the universal chassis apparatus.” Reply 3–4. We agree. To act as its own lexicographer, a patentee must “clearly set forth a definition of the disputed claim term” other than its plain and ordinary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must “clearly express an intent” to redefine the term. Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008); see also Kara Tech. Inc. v. Stamps.com, 582 F.3d 1341, 1347–48 (Fed. Cir. 2009). At most, we understand the passage quoted by Patent Owner to be describing aspects of the “universal chassis apparatus” rather than providing a lexicographical definition of “chassis.”” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for patent owner

    “Claim 6 recites “the backbone structure further comprising a removable service plate, the backbone structure and plate together defining a substantially polygonal cross-sectional shape.” Ex. 1001 13:56–57. Plainly, the “service plate” is a removable component of the backbone structure. Based upon the arguments presented by the parties on whether Gastesi suggests the claimed service plate, we discern no reason to comment upon whether the “service plate” must “be on the backbone.”” slip op. at 9

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The level of skill is determined “in the art to which the claimed invention pertains,” 35 U.S.C. § 103, and neither party identifies that art explicitly. The Specification describes the field of invention as follows: “This invention is related to the field of automotive chassis design and more specifically to the area of interchangeable chassis for use with many models of vehicles.” Ex. 1001, 1:17–19. The Specification repeatedly refers to the chassis as having “universal” characteristics. Id. at Title, passim. The Specification also describes an advantage of its chassis as having “an ability to adapt to different bodies and body styles,” id. at 2:17–21, and criticizes prior art chassis designs that “are not readily adaptable to a wide variety of vehicles without forcing major and expensive redesign work for each vehicle,” id. at 1:29–33. Claims 43 and 44 expressly require that the claimed chassis be “universally adapted” for more than one type of vehicular configuration. Id. at 16:40–17:19. Based on these descriptions of the chassis and the express requirements in at least some of the claims at issue, we determine that the art to which the claimed invention pertains is the design of interchangeable chassis for use with many models of vehicles. We consider Mr. Kunselman’s testimony on the level of ordinary skill to be tied more closely to this relevant art of designing a chassis for use with many models of vehicles. Accordingly, we adopt Patent Owner’s definition of the level of ordinary skill for purposes of this Decision and evaluate obviousness from that perspective. We note that both Mr. Parker and Mr. Kunselman possess such a skill level. Ex. 1003 ¶¶ 6–13; Ex. 2025 ¶¶ 4–9.” slip op. at 18

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “Petitioner persuasively argues that we should discount Mr. Kunselman’s testimony. First, we consider Mr. Kunselman’s testimony to be weak because it is not supported by objective evidence. Second, Mr. Kunselman bases his testimony on the faulty premise that Gastesi’s fuel tank 22 is “immediately adjacent engine 2.” Reply 8; see also Ex. 2025 ¶ 65 (“Since the gas tank is immediately adjacent engine 2, a POSITA would understand that the gas tank fittings would be also located at the lateral end.” (emphasis added).) Third, on cross examination, Mr. Kunselman concedes that Gastesi is not specific about whether its fuel tank is “immediately adjacent” the engine, but instead merely indicates that fuel tank 22 is located somewhere within the centrally located section “B” shown in Gastesi’s Figure 1. Ex. 1063, 121:10–122:19; see also Ex. 1012, 3:1–14, 4:3–4 (describing fuel tank 22 inside tubular structure 3 of Figures 3 and 4). Mr. Parker agrees. Ex. 1061 ¶¶ 30–31. Fourth, Mr. Kunselman also testifies that the installation of service plates to enable access to components positioned beneath the plate were known before 2007. Ex. 1063, 119:6– 120:7. As for the alleged “leak path” introduced by using a service plate in tubular member 3, Mr. Kunselman fails to explain why Gastesi’s fuel tank 22, which is a separate structure within tubular member 3,4 would leak simply because a service plate is installed in tubular member 3. Mr. Parker opines that an ordinarily skilled artisan would understand that the leak path identified by Mr. Kunselman would be mitigated by Gastesi’s use of a separate structure for fuel tank 22. Ex. 1061 ¶ 32. We consider Mr. Parker to be more credible than Mr. Kunselman on this point because Mr. Parker testifies about the structures that Gastesi actually describes rather than simply positing risks without explanation.” slip op. at 20

  Patent outcomesUS 9,045,163 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,045,163
• General Electric Company v. United Technologies CorporationRehearing denied
  PTAB · Oct 18, 2018 · IPR2017-00428 · APJ George R Hoskins · IPR · Rehearing

  The Board denied GE’s rehearing request, leaving intact its finding that claims 10–14 were not shown unpatentable, including claim 10’s failure under §103.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “issue here, the party challenging the decision has the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). 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 the proceeding. Id.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundMotivation not foundNot shown unpatentable

    “We have reviewed the case law cited in Petitioner’s Request. At most, it establishes that prior art disclosures indicating a given design option would be inoperative or technically infeasible are sufficient to teach away from the design option. See Urbanski, 809 F.3d at 1243 (“[i]f references taken in combination would produce a ‘seemingly inoperative device,’ . . . such references teach away from the combination”) (quoting McGinley, 262 F.3d at 1354); DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326–28 (Fed. Cir. 2009) (prior art taught away from a “rigid” pedicle screw in “warn[ing] that rigidity increases the likelihood that the screw will fail within the human body, rendering the device inoperative for its intended purpose”) (emphases added); Orthopedic Equip. Co., Inc. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983) (obviousness may be defeated if “skilled persons in the art felt that there was some technological incompatibility that prevented [the prior art’s] combination”). The cited case law does not, as Petitioner would have it, establish that such prior art disclosures are necessary to teach away from the design option. See Polaris, 882 F.3d at 1069–70 (on remand, “the Board must analyze whether Denney ‘teaches away’” based on undisputed evidence indicating that adding a fuel tank under Denney’s seats would “rais[e] the center of gravity and render[] the vehicle less stable, which would run contrary to one of Denney’s stated purposes”) (emphasis added)1; Urbanski, 809 F.3d at 1243–44 (“the cited references do not teach away,” because “[n]othing in the prior art teaches that the proposed modification would have resulted in an ‘inoperable’ process or a dietary fiber product with undesirable properties”) (emphases added). Instead, a teaching away requires the prior art merely to criticize, discredit, or discourage pursuit of the design option. See Polaris, 882 F.3d at 1068–70 (Board erred in “fail[ing] to analyze whether Denney ‘teaches away’ . . . by determining whether ‘a person of ordinary skill, upon reading [Denney], would be discouraged from following the path set out in [Denney], or would be led in a direction divergent from the path that was taken by the applicant”) (emphases added); Urbanski, 809 F.3d at 1243–44; DePuy Spine, 567 F.3d at 1327; Reply Br. 8–9; Reh’g Req. 4. For the reasons provided in the Decision, Wendus criticizes, discredits, and discourages using a two-stage high pressure turbine in the Wendus ADP engine. See Dec. 23–30.” slip op. at 4

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

    “motivation must be found to physically combine the actual embodiments in” Wendus and Moxon. Reh’g Req. 9–10. However, as stated in the Decision and not disputed in Petitioner’s Request, Petitioner’s case for obviousness is premised upon modifying the specific ADP engine disclosed in Wendus. See Dec. 12 n.5 (citing Pet. 59–60, 65, 66–75 and Reply Br. 23–24). Further, the Decision did not require Petitioner to establish that the two-stage high pressure turbine of Moxon could be bodily incorporated into the Wendus ADP engine. See id. at 32–38. Instead, the Decision discussed Petitioner’s failure to provide a persuasive motivation or justification for why a person of ordinary skill in the art, when modifying the Wendus ADP engine to include a two-stage high pressure turbine, would maintain the other claimed parameters within the scope of claim 10. See id. This was especially true concerning the claimed parameters for the low pressure turbine, which is located downstream of the high pressure turbine. Id. at 36–38.” slip op. at 8

  § 103 obviousnesscites KSR
  Patents in suitUS 8,695,920
• Stingray Digital Group Inc. v. Music ChoiceSome claims unpatentable
  PTAB · Oct 11, 2018 · IPR2017-01191 · APJ Mitchell G Weatherly · IPR · Final written decision

  Claims 1–4 and 6–9 are unpatentable as obvious over Hudson and Dwek; claims 5 and 10–20 were not shown unpatentable because the references do not disclose the genre channel limitation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. LEVEL OF ORDINARY SKILL Petitioner contends a person of ordinary skill in the art pertaining to the ’045 patent, at the time of invention, “would have had at least an undergraduate degree in computer science or electrical engineering, or equivalent experience and, in addition, two years of experience in distribution of digital audio and video via networks.” Pet. 5 (citing Ex. 1003 ¶¶ 11–17). Patent Owner agrees. PO Resp. 6. In considering the issues presently before us, we have adopted and applied Petitioner’s proposed identification of the level of ordinary skill in the art, which is consistent with the ’045 patent and the asserted prior art.” slip op. at 8

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

    “B. CLAIM INTERPRETATION “A claim in an unexpired patent that will not expire before a final written decision is issued shall be given its broadest reasonable construction in light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016) (affirming that USPTO has statutory authority to construe claims according to Rule 42.100(b)). When applying that standard, we interpret the claim language as it would be understood by one of ordinary skill in the art in light of the specification, and absent any special definition, we give claim terms their ordinary and customary meaning. See In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010); In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning is the meaning that the term would have to a person of ordinary skill in the art in question.” (internal quotation marks omitted)). Only terms which are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). In the Decision on Institution, we instructed the parties to brief the meaning of “a message comprising information indicating that the user desires to view the video identified by the video identifier” as recited in claims 1 and 6; and “in response to receiving the message” as recited in claims 1 and 6. Dec. 24. The parties agreed upon the express meaning of both phrases, PO Resp. 6–7; Reply 2, which we adopt for the purposes of this Final Written Decision. We discern no need to interpret any other phrase expressly for the purposes of this Final Written Decision.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner

    “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting Ricoh Co., Ltd. v. Quanta Comput. Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008)). Moreover, a reference “must [be] considered for all it taught, disclosures that diverged and taught away from the invention at hand as well as disclosures that pointed towards and taught the invention at hand.” Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 296 (Fed. Cir. 1985) (citation omitted). A reference does not teach away “if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.” DePuy, 567 F.3d at 1327 (quoting In re Fulton, 391 F.3d at 1201). But even if a reference is not found to teach away, its statements regarding preferences are relevant to a finding regarding whether a skilled artisan would be motivated to combine that reference with another reference. See Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1051 n.15 (Fed. Cir. 2016) (en banc) (noting that, even if a reference “does not teach away, its statements regarding users preferring other forms of switches are relevant to a finding regarding whether a skilled artisan would be motivated to combine the slider toggle in” that reference with the invention of a second reference). Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1069 (Fed. Cir. 2018). Against this background, we determine that Hudson does not teach away from incorporating the ability to customize playlists as described by Dwek. Hudson never expressly mentions permitting a user to customize its storyboards much less disparages doing so. Dr. Shamos testifies that an ordinarily skilled artisan would have recognized that Hudson’s advantages of providing links to ancillary content along with primary content would be further enhanced if users also had Dwek’s ability to customize the primary content they were viewing. Ex. 1003 ¶¶ 43–46. Dr. Russ’s conclusions otherwise fail to consider each of Hudson and Dwek as a whole, but instead focus narrowly upon specific implementations of delivering media in each reference. Ex. 2109 ¶¶ 49–52. When Hudson and Dwek are considered as a whole, the similarities in their goals suggests their combination. For example, Hudson, by incorporating Headings by reference,3 recognizes that its system is compatible with streaming a wide variety of content including “movies, music videos, educational content, television shows, games, live events, and advertising.” Ex. 1005 ¶ 27. Similarly, Dwek recognizes that its system may deliver more than music; it may also “deliver video or other streaming multimedia content.” Ex. 1006, 4:10:12. Patent Owner argues that because Dwek describes joining a customized, shared channel “in progress,” Dwek’s system only broadcasts streams in a manner akin to live radio. PO Resp. 17. However, Dwek also contemplates starting playback of its user-defined shared channels at the beginning of the user-defined playlist. Id. at 11:27– 33. Based on our review of Hudson and Dwek, we determine that they both describe systems in which users have some degree of control over what content they consume and when they consume it. Ex. 1004 ¶¶ 37–40, Figure 4; Ex. 1006, 1:31–50. We also determine that both systems are designed to facilitate commerce related to the content. Ex. 1004 ¶ 41, 44; Ex. 1006, 3:28–57. Based upon our consideration of Hudson and Dwek as a a whole, we credit the testimony of Dr. Shamos over that of Dr. Russ and conclude that Hudson does not teach away from permitting a user to slip op. at 18

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedOther

    “storyboards much less disparages doing so. Dr. Shamos testifies that an ordinarily skilled artisan would have recognized that Hudson’s advantages of providing links to ancillary content along with primary content would be further enhanced if users also had Dwek’s ability to customize the primary content they were viewing. Ex. 1003 ¶¶ 43–46. Dr. Russ’s conclusions otherwise fail to consider each of Hudson and Dwek as a whole, but instead focus narrowly upon specific implementations of delivering media in each reference. Ex. 2109 ¶¶ 49–52. When Hudson and Dwek are considered as a whole, the similarities in their goals suggests their combination. For example, Hudson, by incorporating Headings by reference,3 recognizes that its system is compatible with streaming a wide variety of content including “movies, music videos, educational content, television shows, games, live events, and advertising.” Ex. 1005 ¶ 27. Similarly, Dwek recognizes that its system may deliver more than music; it may also “deliver video or other streaming multimedia content.” Ex. 1006, 4:10:12. Patent Owner argues that because Dwek describes joining a customized, shared channel “in progress,” Dwek’s system only broadcasts streams in a manner akin to live radio. PO Resp. 17. However, Dwek also contemplates starting playback of its user-defined shared channels at the beginning of the user-defined playlist. Id. at 11:27– 33. Based on our review of Hudson and Dwek, we determine that they both describe systems in which users have some degree of control over what content they consume and when they consume it. Ex. 1004 ¶¶ 37–40, Figure 4; Ex. 1006, 1:31–50. We also determine that both systems are designed to facilitate commerce related to the content. Ex. 1004 ¶ 41, 44; Ex. 1006, 3:28–57. Based upon our consideration of Hudson and Dwek as a a whole, we credit the testimony of Dr. Shamos over that of Dr. Russ and conclude that Hudson does not teach away from permitting a user to 3 Ex. 1004 ¶ 27. customize its content storyboards in a manner akin to Dwek’s customization of musical playlists.” slip op. at 18

  Patent outcomesUS 9,351,045 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,351,045
• Stingray Digital Group Inc. v. Music ChoiceSome claims unpatentable
  PTAB · Sep 20, 2018 · IPR2017-00888 · APJ Mitchell G Weatherly · IPR · Final written decision

  Claims 1, 3, and 4 are unpatentable as obvious over Mackintosh and Hallier; claim 8 was not shown unpatentable as anticipated by Hudson.

  RulingsFinal written decision

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

    “Here, the step of “creating a playlist” that includes an asset “corresponding to the selected video” logically requires completing the step of “receiving . . . information indicating that a user desires to view a selected video.” The “selected video” that must be included in the playlist created in step 8b is not determined until after step 8a is completed. Therefore, step 8a must be completed before step 8b is started.” slip op. at 10

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

    “For the reasons expressed in Part II.A above, we conclude that claim 8 requires the first two steps of the claimed method to be performed in the order recited, which means that users select at least one video to view before playlists are created containing the selected video. Under such an interpretation, Petitioner argues that Hudson describes the required order because Hudson expressly states that the steps illustrated in its Figures 3 and 4 may be performed in any order. Reply 20 (citing Ex. 1005 ¶ 35 (for Figure 3), ¶ 40 (for Figure 4)). However, Hudson’s indications that steps can be performed in any order apply only to each of Figures 3 and 4 individually, and not to the combination of the two figures collectively. In connection with its description of Figure 3, Hudson states “the aforementioned steps need not be performed in a particular order” followed by examples that apply only to steps mentioned in Figure 3. Ex. 1005 ¶ 35. Similarly, while describing Figure 4, Hudson states “the aforementioned steps need not occur in a particular order, or include all steps” followed by examples that apply only to steps mentioned in Figure 4. Ex. 1005 ¶ 40. Hudson never indicates that steps illustrated in Figure 4 may occur before steps illustrated in Figure 3. In Figure 3, Hudson illustrates how its system creates interactive video content, which necessarily must be completed before the steps for delivering interactive video content in Figure 4 are possible. For all these reasons, we determine that Petitioner has failed to establish that Hudson performs the first two steps of claim 8 in the order recited as required. Accordingly, we conclude that Petitioner has not shown by a preponderance of evidence that Hudson anticipates claim 8.” slip op. at 16

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

    “Petitioner acknowledges that Mackintosh recognizes that server 214 may be overloaded by simultaneous requests for URLs from many user terminals. Pet. 13 (citing Ex. 1004, 14:29–36). Petitioner also acknowledges that Mackintosh proposes solutions to reduce the load on server 214 imposed by user terminals requesting URLs that link to supplemental content. Id. at 13–14. Patent Owner’s expert, Dr. Russ, concedes that Petitioner’s proposed modification of Mackintosh would reduce the load on server 214. Ex. 1009, 68:23–69:3. Accordingly, the evidence establishes that Petitioner’s proposed modification of Mackintosh would address the problem of overloading server 214.” slip op. at 28

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “For all these reasons, we ascribe little weight to Dr. Russ’s testimony on this point. Instead, we credit Dr. Shamos’s testimony explaining why a person skilled in the art would find Dr. Russ’s hypothetical dual-mute button solution was “not an ‘attractive’ solution for users, content providers, or advertisers.” Ex. 1010 ¶25. In particular, because the “user would be left with the undesirable choice of muting portions of a broadcast track . . . or muting the audio of the supplemental material — meaning the user will miss some portion of content that he or she is interested in, which is both undesirable and ill-conceived.” Id. Accordingly, we find Petitioner’s position on this point to be persuasive.” slip op. at 25

  Patent outcomesUS 7,320,025 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,320,025
• Grit Energy Solutions, LLC v. Oren Technologies, LLCRehearing denied
  PTAB · Aug 7, 2018 · IPR2017-00768 · APJ Michael L Woods · IPR · Rehearing

  The Board denied the petitioner’s rehearing request, leaving intact its conclusion that claims 1–7 were not shown unpatentable under the instituted grounds.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “the burden of showing a decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d). Therefore, Petitioner bears the burden of establishing that we misapprehended or overlooked the matters that it requests that we review.” slip op. at 2

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

    “we found that “for at least the following two reasons, we disagree[d] with Petitioner’s argument that transposing Eng Soon’s pin and receptacle would have been a simple substitution to achieve predictable results.” Final Dec. 22 (citations omitted) (emphasis added). In other words, even if we found that Constantin discloses an orifice or receptacle attached to its actuator—which we do not—we also found that transposing Eng Soon’s pin and receptacle as proposed by Petitioner would result in a more expensive system, and we disagreed with Petitioner’s assertion that modifying Eng Soon would have been a mere simple substitution. See Final Dec. 24 (“we agree with Mr. Smith that a POSITA would not modify Eng Soon to ‘reduce cost,’ as Petitioner proposes . . ., when doing so would increase the overall cost of the mobile containers”) (citing Ex. 2040 ¶ 76). Moreover, even if we treat Petitioner’s First Rationale as separate from its Second Rationale—thereby ignoring the Second Rationale when considering the First Rationale—when considered alone, Petitioner’s First Rationale fails to explain adequately why a POSITA would have transposed Eng Soon’s pin and receptacle. See Pet. 53–54. It is not enough to state that “[Eng Soon’s] pin and receptacle perform the same function to achieve the same result, regardless of their position, [and that] a POSITA would have been able to make the swap.” Reh’g Req. 11; see also Pet. 53–54 (“A POSITA reading Constantin would understand that there is no functional difference between these configurations”). In other words, it is not enough to argue that a POSITA could modify Eng Soon in a manner that meets the claims, without adequately explaining why a POSITA would make the modifications. See Personal Web Techs. LLC v. Apple, Inc., 848 F.3d 987, 993–94 (Fed. Cir. 2017) (finding that a skilled artisan would have understood that prior art could be combined insufficient; “it does not imply a motivation to pick out those two references and combine them to arrive at the claimed invention”). Indeed, we found that the proposed modification would result in a more expensive system. See Final Dec. 24.” slip op. at 9

  • BurdenDecided for patent owner

    “all challenged claims (claims 1–7) under all grounds, namely, Grounds 1 and 2.” Final Dec. 2. Indeed, the Petition sets forth only two grounds; Ground 1 challenging claims 1–3 and 5, and Ground 2 challenging claims 4, 6, and 7. Pet. 6 (Statutory Grounds of Challenge). In our Final Written Decision, we determined that Petitioner failed to meet its burden that any of the challenged claims are unpatentable. Final Dec. 2–3. In particular, we found that Constantin does not disclose an orifice attached to an actuator and concluded that a POSITA would not have modified Eng Soon as Petitioner proposed. See id. at 17–25. We find nothing in Petitioner’s “G1Constantinbased challenges” that cures these fatal defects. Moreover, Petitioner’s statement in footnote 5 that certain “aspects” of Eng Soon and Constantin can somehow be “vice-versa” swapped with other “aspects” fails to rise to the specificity and particularity required under 35 U.S.C § 312(a)(3) and 37 C.F.R. § 42.104(b). The function of the Board is not to comb through the cited art in order to determine the strongest combination of references to meet the claims, thereby overcoming whatever deficiencies may exist in the Petition. See generally LG Elecs., Inc. v. Rosetta-Wireless Corp., Case IPR2016-01516 (PTAB Apr. 3, 2017) (Paper 25).” slip op. at 11

  § 103 obviousness
  Patents in suitUS 8,585,341
• General Electric Company v. United Technologies CorporationAll claims unpatentable
  PTAB · Jul 3, 2018 · IPR2017-00427 · APJ Mitchell G Weatherly · IPR · Final written decision

  Claims 1–4, 7–13, 15, and 16 are unpatentable as obvious over Harner-based grounds and the combination of Gisslen and Harloff.

  RulingsFinal written decision

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

    “Claim 1 requires that “the controller detects the undesired stability margin.” Ex. 1001, 4:37–38. Claim 15 recites a step of: “determining the undesired turbofan stability margin from the detecting step.” Id. at 6:10–11. The parties agree that claims 1 and 15 use “detect” and “determine” interchangeably to mean “to find out, through investigation or calculation.” PO Resp. 23–24; Reply 3. However, the parties disagree on the meaning of “undesired stability margin.” Interpreting this phrase is critical to deciding whether any of the challenged clams is unpatentable. GE contends that “undesired stability margin” means “the fan section has insufficient stability margin to avoid experiencing an instability (e.g., a stall, surge, or flutter).” Pet. 22; Reply 3. UTC contends that the term means “a stability margin (i.e., the difference between the pressure ratio at the fan stability limit line and the pressure ratio at the fan operating point) at which instability may result due to a sudden change in airflow.” PO Resp. 29–30. Thus, we must decide whether detecting an “undesired stability margin” necessarily requires calculating a stability margin by calculating “the difference between the pressure ratio at the fan stability limit line and the pressure ratio at the fan operating point.” We conclude that it does not and that the evidence of record supports GE’s proposed interpretation of this phrase.” slip op. at 5

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “D. LEVEL OF ORDINARY SKILL GE contends a person of ordinary skill in the art pertaining to the ’280 patent, at the time of invention, “includes someone with an M.S. degree in Mechanical Engineering or Aerospace Engineering as well as at least 3–5 years of experience in the field of gas turbine engine design and analysis.” Pet. 24, n.5; Ex. 1003 ¶ 4. UTC does not address expressly the level of ordinary skill in the art in the Patent Owner Response. However, UTC’s witness, Dr. Benini, expresses opinions based on the same level of skill identified by GE. Ex. 2002 ¶ 22. In considering the issues presently before us, we have adopted and applied GE’s proposed identification of the level of ordinary skill in the art, which is consistent with the ’280 patent and the asserted prior art.” slip op. at 15

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

    “combine teachings of Gisslen and Harloff to arrive at the claimed invention. PO Resp. 68–70. GE contends that an ordinarily skilled artisan “would have been motivated to use the variable nozzle disclosed by Gisslen to provide adequate stall margin at various flight conditions, and Harloff describes a known means of controlling the nozzle to do so.” Pet. 58 (citing Ex. 1003 ¶ 109). UTC cites no evidence relating to the presence or absence of such a motivation but argues that GE’s showing is insufficient as a matter of law. PO Resp. 68–70. The use of variable nozzle area fans to increase engine performance while maintaining adequate fan stability margin was well known before the critical date of the ’280 patent. Ex. 1003 ¶ 109 (citing Ex. 1017, 11; Ex. 1008, 1:44–55; Ex. 1015, 4:34–43). Gisslen describes a fan with a variable nozzle area as a mechanism for improving performance in varying flight modes. Ex. 1005, 1:5–10, 2:16–18. Harloff describes enhancing performance by using a fan with a variable nozzle area to maintain stability margin. See Part II.G.3.a) above. We consider GE’s unrebutted evidence of motivation to combine teachings of Gisslen and Harloff to demonstrate a motivation to combine teachings from Gisslen and Harloff to arrive at the claimed invention.” slip op. at 27

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “motivated to do. Id. at 59–61. However, UTC proffers no evidence including testimony from any person representative of ordinary skill to support its argument or respond to GE’s contention that Harner and Rey suggest their combination. See generally Ex. 2002 (offering no testimony regarding whether Harner and Rey suggest their combination to an ordinarily skilled artisan). Instead, they argue that GE’s argument and evidence must fail as a matter of law. Id. We credit Dr. Attia’s unrebutted testimony and GE’s identification of express motivation within Harner and Rey to combine their respective teachings to arrive at the turbofan engine control system of claim 11. We have reviewed the cases cited by UTC for the proposition that GE’s evidence fails as a matter of law and find them to be unpersuasively applied to the facts of this case. Accordingly, we conclude that GE has demonstrated by a preponderance of evidence that the combined teachings of Harner and Rey render claim 11 unpatentable as obvious.” slip op. at 22

  Patent outcomesUS 8,313,280 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 8,313,280

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.