- Baker Hughes Oilfield Operations, Inc. v. Smith International, Inc.Institution deniedPTAB · Dec 22, 2016 · IPR2016-01451 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution: it exercised discretion as to claims 43–46, 49, 50, 62–69, and 72, and found no reasonable likelihood of obviousness for claims 55–58.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“determining whether to institute or order a proceeding under this chapter . . . the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” In light of § 325(d), we consider whether the reexamination contains the same or substantially the same art or arguments as presented in the Petition. Patent Owner argues that we should decline to institute inter partes review under 35 U.S.C. § 325(d) because the Petition raises the same or substantially the same prior art or arguments that were presented previously to the Office. Prelim. Resp. 19–26. In particular, Patent Owner contends that each of the claims in the reexamination was rejected based on Eddison, under either 35 U.S.C. § 102(b) and/or in combination with Jewkes under § 103(a), and that Petitioner relies upon Jewkes again under § 102(b) in its Petition. Id. at 23–26. Petitioner makes no attempt to explain why the references that form the bases for Petitioner’s challenge here are not the same or substantially similar prior art to that presented during the reexamination or why the arguments are not the same or substantially similar to those presented previously to the Office. Eddison and Jewkes were relied upon in the reexamination. See id. at 141–60 (Office Action (mailed Aug. 25, 2014)). Additionally, Tandberg was presented to the Office in conjunction with the original prosecution of the ’817 patent. See Ex. 2003; Prelim. Resp. 28.” slip op. at 9
- Other 314aInstitution denied discretionary otherInstitution denied
“Patent Owner makes a valid point. Section 1.530(k) of Title 37 of the Code of Federal Regulations provides: “Amendments not effective until certificate. Although the Office actions will treat proposed amendments as though they have been entered, the proposed amendments will not be effective until the reexamination certificate is issued and published.” This places us in a difficult position. If Patent Owner ultimately succeeds in the appeal of the reexamination, a certificate will issue and the amendments to claim 43 and its dependents will be “effective.” See id.; see Ex. 1007, 166 (showing the amendments to claim 43). Yet Petitioner provides no analysis of the amended limitations of claim 43. See, e.g., Pet. 16. Alternatively, if Patent Owner is unsuccessful in its appeal to the Federal Circuit, claim 43 and its dependents, as challenged in the reexamination, will be declared unpatentable. In either circumstance, any review we undertake of the unamended version of claim 43, and the claims depending therefrom, will be for naught. Accordingly, in light of the above circumstances, reviewing these claims on the record presented would waste judicial resources as well as the resources of the parties.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner that Petitioner has not articulated a clear reason as to why one of ordinary skill in the art would have modified Jewkes’s drilling assembly to include the additional structures taught by Tandberg and Eddison. We recognize that Petitioner points to Tandberg’s teaching that employing the same fundamental structure as an underreamer and as a stabilizer has an advantage, but Petitioner never explains what that advantage is or why it would have prompted one of ordinary skill in the art to modify Jewkes.5 Accordingly, on the record before us, Petitioner has not established a reasonable likelihood that it would prevail in showing that the combination of Jewkes, Tandberg, and Eddison would have rendered the subject matter of claims 55–58 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“We agree with Patent Owner that Petitioner has not articulated a clear reason as to why one of ordinary skill in the art would have modified Jewkes’s drilling assembly to include the additional structures taught by Tandberg and Eddison. We recognize that Petitioner points to Tandberg’s teaching that employing the same fundamental structure as an underreamer and as a stabilizer has an advantage, but Petitioner never explains what that advantage is or why it would have prompted one of ordinary skill in the art to modify Jewkes.5 Accordingly, on the record before us, Petitioner has not established a reasonable likelihood that it would prevail in showing that the combination of Jewkes, Tandberg, and Eddison would have rendered the subject matter of claims 55–58 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 12
§ 103 obviousnessDiscretionary denialPatents in suitUS 6,732,817 - Baker Hughes Oilfield Operations, Inc. v. Smith International, Inc.Institution deniedPTAB · Dec 22, 2016 · IPR2016-01450 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution on all challenged claims under § 325(d), citing overlapping prior art and arguments, the pending reexamination appeal, and resource conservation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“D. 35 U.S.C. § 325(d) Section 325(d) of Title 35 of the United States Code provides: “In determining whether to institute or order a proceeding under this chapter . . . the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” In light of § 325(d), we consider whether the reexamination contains the same or substantially the same art or arguments as presented in the Petition.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“II. CLAIM CONSTRUCTION Although Petitioner and Patent Owner present proposed constructions for several claim terms, no terms require express construction for purposes of this Decision. Pet. 15–21; Prelim. Resp. 10–23.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerGranted
“On August 29, 2016, Petitioner requested, via electronic mail, to file a motion to correct its identification of the real party in interest in this proceeding. In particular, Petitioner requested the addition of Baker Hughes Incorporated as a real party in interest. Petitioner indicated that Patent Owner would not oppose its request. In a responsive email on September 29, 2016, we authorized Petitioner to file a motion to correct the identified real party in interest. On October 4, 2016, Petitioner filed an Updated Mandatory Notice in which Petitioner stated that it “moves the Board to allow correction of Petitioner’s Real Part in Interest (‘RPI’) disclosure.” Paper 8, 1. Although Petitioner did not file a motion to correct as it had requested, we treat its updated mandatory notice as such and hereby grant Petitioner’s request. Accordingly, Baker Hughes Incorporated is a real party in interest in this proceeding as well.” slip op. at 3
Claim constructionDiscretionary denialPatents in suitUS 6,732,817 - Robert Bosch LLC / Daimler AG v. Orbital Australia Pty LtdAll claims unpatentablePTAB · Dec 22, 2016 · IPR2015-01258 · APJ Ken B Barrett · IPR · Final written decision
Claims 1, 2, 5, 9, 10, and 12–14, and 18 are unpatentable as anticipated by Bernhardt or obvious over the stated combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“have at least an undergraduate degree in mechanical engineering or a similar technical field and at least two (2) years of relevant work experience or equivalent advanced education in a field related to engine control technology.” Pet. 3 n.1. Patent Owner adopts, for purposes of this proceeding, Petitioner’s proposed definition of the ordinary artisan. PO 2 In its Preliminary Response, Patent Owner argued that Petitioner failed to meet its burden of establishing Bernhardt as a prior art printed publication. Prelim. Resp. 29, 32. Patent Owner subsequently withdrew its argument and “agree[d] that it will not submit in the IPR2015-01258 proceeding any arguments challenging the admissibility of the Bernhardt Exhibit in a motion to exclude, at the Oral Hearing, or at any other time in the IPR2015-01258 proceeding, including in any appeal of a final written decision.” Paper 22. Resp. 12 n.2. Based on our review of the record, we too adopt Petitioner’s assessment of the level of ordinary skill in the art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“We do not find Patent Owner’s arguments persuasive. As Petitioner notes (Reply 16), in claim 1, the fuelling rate of at least one cylinder during the period “while said ignition is so retarded” is compared to the fuelling rate during the period “when the engine is operating normally,” a phrase appearing later in the same limitation. This suggests that the retarded ignition state, like the operating normally state, is a condition of the engine’s pertinent cylinder, not a period within a single cycle, e.g., ATDC. See Ex. 1001, col. 3, ll. 22–33 (distinguishing “cylinder(s) operating under ignition retard/high fuelling rate conditions” with other cylinder(s) operating under “normal conditions”). In other words, a particular cylinder during a given cycle is operating either normally or is “so retarded,” according to the claimed method. Patent Owner offers no persuasive argument or evidence that one of ordinary skill in the art would understand the state of being ignition-retarded applies to only the portion of a cycle occurring ATDC, or would understand the claim to require a cylinder, during the same cycle, to be in both a normal operating state (in the BTDC range) and in an ignition-retarded state (in the ATDC range). Cf. Tr. 32:1–23 (counsel for Patent Owner confirming that, before the start of a cycle, the status of being ignition-retarded or operating normally is known). Patent Owner argues that the Board’s preliminary construction renders redundant and superfluous the phrase “while said ignition is so retarded.” PO Resp. 27–29. Patent Owner reasons that the phrase “when the engine is operating normally” already contrasts the fueling rate of the “‘retarded ignition’ state” with the normally operating (“non-retarded ignition”) state thereby rendering redundant and superfluous the phrase “while said ignition is so retarded” if we do not adopt Patent Owner’s proposed construction. Id. We do not find this argument persuasive. That phrase does not, as Patent Owner argues, limit the timing of the “increasing the fuelling rate” step to a period that is a subset of a given cycle, e.g., ATDC. Rather, the “while said ignition is so retarded” phrase requires the “increasing the fuelling rate” step to be performed at the same time as, i.e., “while,” the ignition is retarded pursuant to the “retarding the ignition” step, i.e., in an ignition-retarding condition or state. This is confirmed by the specification, which discusses performing the first two steps of the claim at the same time, explaining that, upon attainment of the desired exhaust temperature, “the engine management system may then cease to effect the ignition retard and high fuelling rate conditions and return the cylinder to normal ignition timing and fuelling rates.” Ex. 1001, col. 5, ll. 24–29. Were the “while said ignition is so retarded” absent from the claim, consistent with Patent Owner’s argument, the method would be practiced in a situation where the ignition was retarded then returned to normal, and thereafter the fueling rate increased relative to that of the normal operating conditions. By contrast, requiring the increasing of the fuelling rate to occur “while said ignition is so retarded” serves the claimed method’s purpose of increasing downstream gas temperatures. See Ex. 1008, 84 (Applicant, during prosecution, attempting to distinguish Morikawa by arguing that the reference “contains no disclosure of increasing the fuelling rate while the ignition is retarded for the purpose of assisting in increasing the exhaust gas temperature, as in the present invention”); id. at 85 (similarly attempting to distinguish two other references because they allegedly “lack disclosure which would have made it obvious to increase the fuelling rate while the ignition is retarded for the purpose of assisting in increasing the exhaust gas temperature”). The phrase “while said ignition is so retarded” is not redundant or superfluous under our preliminary construction.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Patent Owner contends, however, that Bernhardt does not anticipate if we adopt its proposed construction of “while said ignition is so retarded, increasing the fuelling rate” as requiring some fuel to be injected ATDC. PO Resp. 51. Specifically, Patent Owner argues that Bernhardt “necessarily injects all fuel BTDC” and therefore Bernhardt fails to disclose the “increasing the fuelling rate” limitation under Patent Owner’s narrow construction. Patent Owner’s argument is not persuasive because, for the reasons set forth above, the properly construed claims are not as narrow as Patent Owner proposes. See Section II.B. Based on the argument and evidence presented in the Petition and having considered the argument and evidence presented by both parties during the trial, we are persuaded that Petitioner has established, by a preponderance of the evidence, that claims 1, 2, 5, 10, 12, 13, and 18 are anticipated by Bernhardt.” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Patent Owner relies on its arguments concerning the Bernhardt anticipation ground and does not challenge otherwise Petitioner’s contentions regarding these two obviousness grounds. PO Resp. 51; see Tr. 28:24–29:16. We are persuaded by Petitioner’s contentions with respect to these two obviousness grounds based on Bernhardt (Pet. 24–31), and we adopt them as our own. We determine that Petitioner has demonstrated by a preponderance of the evidence that the combination of Bernhardt and Onishi renders obvious claim 9 and that the combination of Bernhardt and Griese renders obvious claim 14.” slip op. at 25
Patent outcomesUS 5,655,365 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 5,655,365 - Robert Bosch LLC / Daimler AG v. Orbital Australia Pty LtdAll claims unpatentablePTAB · Dec 22, 2016 · IPR2015-01259 · APJ Ken B Barrett · IPR · Final written decision
Claims 1, 2, 5, 9, 10, 12–14, and 18 are unpatentable as obvious over the instituted combinations of prior art.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We do not find Patent Owner’s arguments persuasive. As Petitioner notes (Reply 16), in claim 1, the fuelling rate of at least one cylinder during the period “while said ignition is so retarded” is compared to the fuelling rate during the period “when the engine is operating normally,” a phrase appearing later in the same limitation. This suggests that the retarded ignition state, like the operating normally state, is a condition of the engine’s pertinent cylinder, not a period within a single cycle, e.g., ATDC. See Ex. 1001, col. 3, ll. 22–33 (distinguishing “cylinder(s) operating under ignition retard/high fuelling rate conditions” with other cylinder(s) operating under “normal conditions”). In other words, a particular cylinder during a given cycle is operating either normally or is “so retarded,” according to the claimed method. Patent Owner offers no persuasive argument or evidence that one of ordinary skill in the art would understand the state of being ignition-retarded applies to only the portion of a cycle occurring ATDC, or would understand the claim to require a cylinder, during the same cycle, to be in both a normal operating state (in the BTDC range) and in an ignition-retarded state (in the ATDC range). Cf. Tr. 32:1–23 (counsel for Patent Owner confirming that, before the start of a cycle, the status of being ignition-retarded or operating normally is known).” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for patent owner
“II. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner maintains that a person of ordinary skill in the art “would have at least an undergraduate degree in mechanical engineering or a similar technical field and at least two (2) years of relevant work experience or equivalent advanced education in a field related to engine control technology.” IPR2015-01258 (related case), Paper 3, 3 n.1.2 Patent Owner adopts, for purposes of this proceeding, Petitioner’s proposed definition of the ordinary artisan. PO Resp. 12 n.2. Based on our review of the record, we too adopt Petitioner’s assessment of the level of ordinary skill in the art. 2 Petitioner, in this case, utilizes a slightly different articulation of the level of ordinary skill in the art. See Pet. 3 n.1. The differences do not affect the outcome.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“We are persuaded by Petitioner’s contentions with respect to these three obviousness grounds based on Hitomi and Onishi (Pet. 11–27), and we adopt them as our own. We determine that Petitioner has demonstrated by a preponderance of the evidence that the combination of Hitomi and Onishi renders obvious claims 1, 9, 10, 13, 14, and 18; that the combination of Hitomi, Onishi, and Eichler ’089 renders obvious claim 5; and that that the combination of Hitomi, Onishi, and Takada renders obvious claim 12.” slip op. at 26
Patent outcomesUS 5,655,365 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 5,655,365 - Bixolon Co., Ltd. v. Shinheung Precision Co., Ltd.Rehearing deniedPTAB · Dec 6, 2016 · IPR2016-01068 · APJ Amanda F Wieker · IPR · Rehearing
The Board denied Bixolon’s rehearing request, leaving in place the denial of institution on claims 1–18 because the Petition did not explain how Hosomi’s optical detector could be combined with its contact-based structures.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“feasible” for these structures to be used together. Id. at 14. The Board found, however, that the structure Petitioner relies upon to satisfy the claimed “position adjusting means”—bolt 25 and hole 72—“appears mutually exclusive to Hosomi’s ‘means for optically detecting.’” Id. at 12. The Board found that the Petition, and the cited expert testimony of Mr. Charles Curley (Ex. 1006), failed to explain persuasively whether it would have been obvious to a person of ordinary skill in the art to utilize Hosomi’s “means for optically detecting” with the disclosed and relied-upon structure of Hosomi’s contact-based detector 24, including bolt 25 and hole 72, because those structures appear mutually exclusive to each other. Dec. 13– 14. Petitioner’s Request for Rehearing does not inform us of error in that regard. It is Petitioner’s burden, not the Board’s obligation, to demonstrate how the claims are unpatentable over the prior art of record. See 37 C.F.R. § 104(b)(4); Hopkins Mfg. Corp. v. Cequent Performance Prods., Inc., IPR2015-00609, Paper 9, 12 (PTAB Aug. 14, 2015) (“While it might be possible for us to arrive at an articulable ground by sifting through Petitioners’ identifications of grounds, the claim charts, the references, and the numerous cited paragraphs of the expert declaration . . . we decline to do so.”). On the facts of this case, Petitioner’s vague statements about how Hosomi’s structure may be modified (e.g., to replace contact-based detecting element 64 with an optical detector), without addressing the impact of that modification on other related structures (e.g., limit switch 67, actuating lever 63, supporting frame 62, hole 72/bolt 25), does not satisfy this burden. See, e.g., Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM2012- 00003, Paper No. 8, 10 (PTAB Oct. 25, 2012) (“[W]e will address only the basis, rationale, and reasoning put forth by the Petitioner in the petition, and resolve all vagueness and ambiguity in Petitioner’s arguments against the Petitioner.”).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“feasible” for these structures to be used together. Id. at 14. The Board found, however, that the structure Petitioner relies upon to satisfy the claimed “position adjusting means”—bolt 25 and hole 72—“appears mutually exclusive to Hosomi’s ‘means for optically detecting.’” Id. at 12. The Board found that the Petition, and the cited expert testimony of Mr. Charles Curley (Ex. 1006), failed to explain persuasively whether it would have been obvious to a person of ordinary skill in the art to utilize Hosomi’s “means for optically detecting” with the disclosed and relied-upon structure of Hosomi’s contact-based detector 24, including bolt 25 and hole 72, because those structures appear mutually exclusive to each other. Dec. 13– 14. Petitioner’s Request for Rehearing does not inform us of error in that regard. It is Petitioner’s burden, not the Board’s obligation, to demonstrate how the claims are unpatentable over the prior art of record. See 37 C.F.R. § 104(b)(4); Hopkins Mfg. Corp. v. Cequent Performance Prods., Inc., IPR2015-00609, Paper 9, 12 (PTAB Aug. 14, 2015) (“While it might be possible for us to arrive at an articulable ground by sifting through Petitioners’ identifications of grounds, the claim charts, the references, and the numerous cited paragraphs of the expert declaration . . . we decline to do so.”). On the facts of this case, Petitioner’s vague statements about how Hosomi’s structure may be modified (e.g., to replace contact-based detecting element 64 with an optical detector), without addressing the impact of that modification on other related structures (e.g., limit switch 67, actuating lever 63, supporting frame 62, hole 72/bolt 25), does not satisfy this burden. See, e.g., Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM2012- 00003, Paper No. 8, 10 (PTAB Oct. 25, 2012) (“[W]e will address only the basis, rationale, and reasoning put forth by the Petitioner in the petition, and” slip op. at 3
- BurdenDecided for patent owner
“feasible” for these structures to be used together. Id. at 14. The Board found, however, that the structure Petitioner relies upon to satisfy the claimed “position adjusting means”—bolt 25 and hole 72—“appears mutually exclusive to Hosomi’s ‘means for optically detecting.’” Id. at 12. The Board found that the Petition, and the cited expert testimony of Mr. Charles Curley (Ex. 1006), failed to explain persuasively whether it would have been obvious to a person of ordinary skill in the art to utilize Hosomi’s “means for optically detecting” with the disclosed and relied-upon structure of Hosomi’s contact-based detector 24, including bolt 25 and hole 72, because those structures appear mutually exclusive to each other. Dec. 13– 14. Petitioner’s Request for Rehearing does not inform us of error in that regard. It is Petitioner’s burden, not the Board’s obligation, to demonstrate how the claims are unpatentable over the prior art of record. See 37 C.F.R. § 104(b)(4); Hopkins Mfg. Corp. v. Cequent Performance Prods., Inc., IPR2015-00609, Paper 9, 12 (PTAB Aug. 14, 2015) (“While it might be possible for us to arrive at an articulable ground by sifting through Petitioners’ identifications of grounds, the claim charts, the references, and the numerous cited paragraphs of the expert declaration . . . we decline to do so.”). On the facts of this case, Petitioner’s vague statements about how Hosomi’s structure may be modified (e.g., to replace contact-based detecting element 64 with an optical detector), without addressing the impact of that modification on other related structures (e.g., limit switch 67, actuating lever 63, supporting frame 62, hole 72/bolt 25), does not satisfy this burden. See, e.g., Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM2012- 00003, Paper No. 8, 10 (PTAB Oct. 25, 2012) (“[W]e will address only the basis, rationale, and reasoning put forth by the Petitioner in the petition, and resolve all vagueness and ambiguity in Petitioner’s arguments against the Petitioner.”).” slip op. at 3
NonePatents in suitUS 6,629,666 - Camelbak Products, LLC v. Ignite USA, LLCRehearing deniedPTAB · Sep 30, 2016 · IPR2015-01034 · APJ Amanda F Wieker · IPR · Rehearing
The Board denied the patent owner’s rehearing request, leaving claim 7 unpatentable under § 103(a) and claims 1, 3, 6, and 10–15 unpatentable under § 102(b).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A request for rehearing must identify specifically all matters the party believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“that the proposed modification to the shape or size of Oosterling’s spring would have “detrimental effects” on Oosterling’s lid design, “including precluding proper attachment of the lid 4 to the beaker.’” Req. Reh’g 10. This argument was not overlooked; rather, Patent Owner has not explained persuasively how a modified spring would preclude proper lid attachment. As discussed above and in our Final Written Decision, we are unpersuaded of the lid and/or opening.” See Final Dec. 33–34 (emphasis added); Req. Reh’g 5–6 n.5; PO Resp. 43. This is a typographical error. We note, however, that our Final Written Decision addresses Patent Owner’s actual argument that the lever will impact the “side” of the lid and/or opening. Final Dec. 33–34 (“Patent Owner provides no technical reasoning to explain how a spring modified as proposed by Petitioner would be ineffective to pivot 90 degrees due to impact with . . . the side[] of the lid or opening.”). 4 Similarly, the cited testimony of Mr. Steininger is unpersuasive because it only addresses a change in the spring’s “length,” where the proposed modification involves a change to the spring’s “shape or size.” Req. Reh’g. 9 (citing Ex. 2006, 278:22–284:21); Final Dec. 31. This testimony does not show that the claimed pivoting would be prevented with a change in shape or size. that Oosterling’s lever would impact the side of Oosterling’s lid, opening, or seal, because Patent Owner’s argument in this regard does not account for a modified spring as proposed. See Final Dec. 33–34. Further, as explained in our Final Written Decision, we are unpersuaded by Patent Owner’s contention that the proposed modification would eliminate the disclosed interference fit between Oosterling’s lever and opening. Compare Req. Reh’g 10–11, with Final Dec. 33 n. 10. Patent Owner has not presented any technical analysis or compelling evidence showing that changing the shape or size of Oosterling’s spring would eliminate the interference fit disclosed by Oosterling. See PO Resp. 42–46 (arguing that changing the size of Oosterling’s opening would eliminate the interference fit, but making no such argument with respect to a change in shape or size of the spring).” slip op. at 6
§ 103 obviousnessPatents in suitUS 8,863,979 - John Crane, Inc. / John Crane Production Solutions, Inc. et al. v. Finalrod IP, LLCInstitution deniedPTAB · Jun 7, 2016 · IPR2016-00521 · APJ Amanda F Wieker · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–40 were unpatentable over the cited obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“purportedly to the claimed apexes, leading edges, and trailing edges, the Petition does not address whether these elements are arranged as required by the claims. Specifically, the Petition does not address the claim language requiring that, for each wedge-shaped portion, “each apex form[s] a perimeter . . . that is the narrowest part of the cavity associated with each wedge shaped portion such that the leading edge is longer than the trailing edge.” See, e.g., Ex. 1001, 8:39–43 (emphasis added). It is not sufficient to merely identify where these structures are shown purportedly in the prior art. The claimed relationship between the structures must be shown also. The Petition does not show sufficiently that the apexes taught by the combination of Rutledge ’431 and Strandberg form perimeters that impact the lengths of the leading and trailing edges such that the leading edge is longer than the trailing edge. Rather, the Petition contends that each apex is located at the topmost part of a wedge-shaped portion, e.g., between adjacent wedge-shaped portions, and does not show sufficiently that an apex at this location forms a perimeter such that the leading edge is longer than the trailing edge. Therefore, the Petition fails to establish a reasonable” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“purportedly to the claimed apexes, leading edges, and trailing edges, the Petition does not address whether these elements are arranged as required by the claims. Specifically, the Petition does not address the claim language requiring that, for each wedge-shaped portion, “each apex form[s] a perimeter . . . that is the narrowest part of the cavity associated with each wedge shaped portion such that the leading edge is longer than the trailing edge.” See, e.g., Ex. 1001, 8:39–43 (emphasis added). It is not sufficient to merely identify where these structures are shown purportedly in the prior art. The claimed relationship between the structures must be shown also. The Petition does not show sufficiently that the apexes taught by the combination of Rutledge ’431 and Strandberg form perimeters that impact the lengths of the leading and trailing edges such that the leading edge is longer than the trailing edge. Rather, the Petition contends that each apex is located at the topmost part of a wedge-shaped portion, e.g., between adjacent wedge-shaped portions, and does not show sufficiently that an apex at this location forms a perimeter such that the leading edge is longer than the trailing edge. Therefore, the Petition fails to establish a reasonable” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the record before us, we need not construe explicitly these terms and phrases in reaching our Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Accordingly, we provide the terms and phrases their ordinary and customary meaning as understood by a person of ordinary skill in the art in light of the ’162 patent Specification.” slip op. at 6
Claim construction§ 103 obviousnessPatents in suitUS 8,851,162 - Camelbak Products, LLC v. Ignite USA, LLCAll claims unpatentablePTAB · Jun 7, 2016 · IPR2015-01034 · APJ Amanda F Wieker · IPR · Final written decision
Claims 1, 3, 6, and 10–15 are unpatentable as anticipated by Oosterling; claim 7 is unpatentable as obvious over Oosterling.
RulingsFinal written decision- Skill levelOther
“II. ANALYSIS A. Level of Skill of Person in the Art Petitioner and Patent Owner dispute the appropriate level of ordinary skill in the art. Compare Pet. 11, with PO Resp. 19. We find that the level of ordinary skill in the art is reflected by the prior art of record, and the dispute between Petitioner and Patent Owner is not determinative of any issue in this proceeding. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); see also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). 1 WO Publication 2005/115204 A1, published Dec. 8, 2005. Ex. 1003 (“Oosterling”).” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“We have reviewed the passages to which Patent Owner directs our attention and we are not persuaded that the ’979 patent Specification provides a special definition. In particular, the Specification does not define “connected” with clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d at 1480. Although the Specification discloses an embodiment in which components “are at all times connected to the lid assembly . . . [and] are not removed and therefore cannot be misplaced or disassociated from the lid assembly,” (see Ex. 1001, 4:35–45), it does not redefine explicitly the term “connected” to require that all connections are permanent and prevent disassociation of components. Specifically, these passages contain no indication that they provide a definition for “connected” rather than an example of what a connection may entail. See In re Paulson, 30 F.3d at 1480. As such, Patent Owner’s proposed construction goes beyond the plain and ordinary meaning of the term by adding elements from the Specification into the term. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (“Even when the specification describes only a single embodiment, the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using ‘words or expressions of manifest exclusion or restriction.’”) (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002)).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim,” but does not limit the invention “where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citations omitted). The preambles of the challenged claims do not recite essential structure and are not necessary to give life, meaning, or vitality to the claims. For example, the body of claim 1 recites a lid housing, a seal arm, a drink seal, and a trigger member, which together present a structurally complete invention that has meaning independent of the preamble. Ex. 1001, 11:37–55. The preamble indicates merely how these components are intended to be used, i.e., as a “lid assembly for a beverage container.” Id. at 11:36. Nothing in the portions of the Specification cited by Patent Owner compels a different conclusion. See id. at 4:13–15. Therefore, we conclude that the preamble phrase “lid assembly” is not limiting and does not require construction as advocated by Patent Owner. slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“In sum, we find that a person of ordinary skill in the art would have understood the term “connected,” as used in the ’979 patent, to include nonpermanent connections. Patent Owner urges a construction that is too narrow, by focusing on the preferred embodiment while disregarding the more expansive disclosure of the patent. We must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. See Van Geuns, 988 F.2d at 1184. Here, Patent Owner chose to claim its invention broadly, and we are provided insufficient evidence before us to construe the claim more narrowly. For the reasons discussed above, “connected” does not require a permanent connection and does not require that the connection “prevent the component from being misplaced or disassociated from the lid assembly in both the operable and cleaning positions,” as Patent Owner urges. PO Resp. 17–18. Rather, “connected” includes non-permanent connections.” slip op. at 10
Patent outcomesUS 8,863,979 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,863,979 - Robert Bosch LLC / Daimler AG v. Orbital Australia Pty LtdInstitution deniedPTAB · May 13, 2016 · IPR2016-00083 · APJ Ken B Barrett · IPR · Institution
The Board denied institution on all challenged claims under § 325(d) and dismissed the motion for joinder as moot.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“whether, in our discretion, the Petition in this case warrants inter partes review. Petitioner states in the Joinder Motion that its third Petition “raises the same grounds of unpatentability as the First and Second ’365 IPRs, with the same support from the same expert, the only change being the additional evidence supporting Bernhardt’s publication.” Motion for Joinder 1; see also id. at 6–7 (same). Petitioner also represents “[t]he Third ’365 IPR Petition is identical to the First and Second ’365 IPR petitions on the grounds related to Bernhardt.” Id. at 5 (citing IPR2016-00083, Paper 3 (Petition), 58). Petitioner states: If the Board elects not to institute trial on any grounds in IPR2015-01258 and IPR2015-01259, based on insufficient evidence being presented in those petitions to prove that Bernhardt is prior art under 35 U.S.C. § 102(b), the Board should grant this petition and institute trial on all grounds because this petition provides additional evidence sufficient to prove that Bernhardt was published and sufficiently accessible to the public interested in the art prior to the ’365 patent’s earliest priority date.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“U.S.C. § 314(a), which provides that a review may not “be instituted unless the Director2 determines that the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” As we have recognized, “Congress did not mandate that an inter partes review must be instituted under certain conditions. Rather, by stating that the Director—and by extension, the Board—may not institute review unless certain conditions are met, Congress made institution discretionary.” Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., Case IPR2013-00324, slip op. at 4 (PTAB Nov. 21, 2013) (Paper 19). In determining whether to institute an inter partes review, the Board may “deny some or all grounds for unpatentability for some or all of the challenged claims.” 37 C.F.R. § 42.108(b); see 35 U.S.C. § 314(a).” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingNot reached
“whether to join a party to an inter partes review under 35 U.S.C. § 315(c): JOINDER.–If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. Thus, joinder in an inter partes review may be warranted in certain circumstances, but is not required in any. See Sony Corp. v. Network-1 Sec. Solutions, Inc., Case IPR2013-00386, slip. op. at 3 (PTAB July 29, 2013) (Paper 16) (“[t]he Board will determine whether to grant joinder on a caseby-case basis, taking into account the particular facts of each case, substantive and procedural issues, and other considerations”). The statute does, however, set forth at least one circumstance in which we do not have the discretion to join a party: if the Board determines that a later (in this case third) petition does not warrant institution. 35 U.S.C. § 315(c) (“the Director . . . may join as a party . . . any person who properly files a petition . . . that the Director . . . determines warrants the institution of an inter partes review under section 314”).” slip op. at 10
Discretionary denialPatents in suitUS 5,655,365
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.