• Globus Medical, Inc. v. Bonutti Skeletal Innovations LLCInstitution denied
  PTAB · Dec 16, 2015 · IPR2015-01346 · APJ Erica A Franklin · IPR · Institution

  The Board denied institution because Petitioner failed to show a reasonable likelihood of proving any challenged claim unpatentable on the asserted obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon considering the Petition and Preliminary Response, we determine that Petitioner has not shown a reasonable likelihood that it would prevail in showing the unpatentability of any challenged claim. Accordingly, the Petition is denied.” slip op. at 2

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

    “relationship between first and second bones which are interconnected at a joint. In particular, claim 8 requires that the step of moving the second bone relative to the first bone “includes expanding at least a portion of the joint interconnecting the first and second bones by applying force against the first and second bones with a wedge member.” Petitioner asserts that Wagner teaches this limitation. Pet. 18. According to Petitioner, Wagner’s method involves advancing the wedge member device by sliding it posteriorly in the intervertebral space, wherein “the first and second surfaces of the wedge shaped body engage the faces of the first and second vertebrae at which the device is implanted, forcing the intervertebral space open (i.e. expanding at least a portion of the joint) and moving the vertebrae apart.” Id. at 18 (citing Ex. 1011 ¶ 36). In other words, Petitioner asserts that Wagner describes “forcing the intervertebral space open with a wedge shaped device.” Id.” slip op. at 8

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

    “Based upon our review, the Specification of the ’531 patent does not expressly define the claim term “tapers.” Thus, we adopt the ordinary and customary meaning of the term “tapers,” which is “to become progressively smaller toward one end.” Ex. 3001, MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY, 10th ED. That meaning is consistent with (a) the Specification description that the wedge member 44 tapers from a thick end portion to a thin end portion, and (b) the Specification figures depicting the minor surface becoming progressively smaller from the thick end to the thin end. Ex. 1001, 5:57–61; 15:32–34; Figs. 5–7, 17. Claim 105, thus, requires a minor side surface that becomes progressively smaller from said thick end portion to said thin end portion. In view of our analysis, we determine that express construction of additional claim terms is not necessary for purposes of this Decision.” slip op. at 7

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable

    “We agree with Patent Owner. As discussed above, we have adopted the ordinary and customary meaning of the term “tapers,” which is “to become progressively smaller toward one end.” Benezech’s Figure 2 shows a rise in the height of the minor side surface as it extends from the thick end portion to the thin end portion of the wedge member. Thus, contrary to the assertions of Petitioner and Dr. Ochoa, we find that Benezech’s Figure 2 does not disclose a cage, i.e., wedge member, that tapers, i.e., becomes progressively smaller, from the thick end portion to the thin end portion, as required by claim 105. Moreover, although Benezech explains that the “cage can have various dimensions in height, in width, and in depth,” the reference emphasizes that “the special profile and shape of the cage 1A in the example FIG. 2 enable the overall device to fit perfectly in the intervertebral space.” Ex. 1007, 4:8–9, 5:1–3. Thus, to the extent Petitioner suggests that modifying the shape of the cage in Figure 2 to meet the claim limitation would have been obvious to a person of ordinary skill in the art, we disagree as Benezech characterizes the depicted “special profile and shape” in Figure 2 to “fit perfectly” in its intended location.” slip op. at 14

  Claim construction§ 103 obviousness
  Patents in suitUS 6,099,531
• Globus Medical, Inc. v. Bonutti Skeletal Innovations LLCInstitution denied
  PTAB · Dec 16, 2015 · IPR2015-01345 · APJ Meredith C Petravick · IPR · Institution

  The Board denied institution on claims 1, 8, and 34 because Petitioner did not show a reasonable likelihood of prevailing on any asserted obviousness ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “We have jurisdiction under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” We determine that Petitioner has not demonstrated that there is a reasonable likelihood that it would prevail with respect to any of the challenged claims. For the reasons described below, we do not institute an inter partes review of claims 1, 8, and 34.” slip op. at 2

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “that a surgeon may strike it with a hammer if necessary to urge the implant 50 into place between two vertebrae that have been slightly spread apart from their normal spacing during the surgical procedure.” Id. col. 8, l. 65– col. 9, l. 2. As can be seen from the above and contrary to Petitioner’s assertion and that of its declarant Dr. Ochoa, Wagner does not disclose moving the second bone from a first orientation relative to the first bone under the influence of force applied against the second bone by the wedge member as the wedge member moves into the joint between the first and second bones. Rather, the joint between the bones is expanded prior to striking the handle with a hammer to urge the implant into place. Id. at col. 9, ll. 1–2, 32–34. Indeed, as discussed, the implant is situated in a somewhat recessed position within the stabilizing lips 110 and between the opposed arms 102, such that striking the handle with a hammer would cause the forward portion of the arms 102 and/or the outward portion of the stabilizing lips 110 to encounter the spaced apart vertebrae, rather than the implant itself. Consequently, based on the information presented, Petitioner has not established sufficiently that Wagner teaches or suggests every limitation of independent claim 1. On this record, we determine Petitioner fails to demonstrate a reasonable likelihood that it would prevail in showing that independent claim 1, or its dependent claim 8, would have been obvious over Wagner.” slip op. at 9

  § 103 obviousness
  Patents in suitUS 6,423,063
• Eastman Kodak Co. / Agfa Corp. et al. v. CTP Innovations, LLCNo claims unpatentable
  PTAB · Nov 25, 2015 · IPR2014-00788 · APJ Benjamin D M Wood · IPR · Final written decision

  The Board held claims 10–20 not shown unpatentable because the asserted combinations did not show a reason to produce and provide the plate-ready file from a location remote from the printer.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “reasonable interpretation in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278 (Fed. Cir. 2015). Under this standard, the claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We expressly construe below only those claim terms that require analysis to resolve arguments related to the patentability of the challenged claims. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those [claim] terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). All other terms will be accorded their ordinary and customary meaning as would be understood by one of ordinary skill at the time of the invention. 1. “A method of providing printing and publishing services to a remote client in real time using a communication network” (claim 10); “A method of providing printing and publishing services to a remote client . . . in real time using a wide area communication network” (claim 16) The preamble for each of independent claims 10 and 16 recites a method of providing printing and publishing services to a remote client “in real time.” In the Decision on Institution, we determined that “the preambles in the claims at issue, including the term ‘real time,’ do not limit the scope of the claims.” Dec. on Inst. 11–13. Neither Patent Owner in its Response nor Petitioner in its Reply disputed this determination. Further, we are not aware of any evidence adduced at trial that calls this determination into question. Therefore, based on our analysis in the Decision on Institution, we determine that the preambles in the claims at issue, including the term “real time,” do not limit the scope of the claims.” slip op. at 8

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

    “The Specification does not define “plate-ready file” expressly, but its meaning is discernible from the term itself: a file that can be used to produce a printing plate without further modification. See Ex. 1001, 10:7– 14 (equating the term “plate-ready file” with “a single file that is stable, predictable, and ready to image to proof or plate”). Moreover, as Petitioner states, the plate-ready file can be used with a platesetter to create a plate directly, or with an imagesetter to produce film that is then used to create the plate. Pet. 22. Further, we agree with the parties that because the file is “plate-ready,” it represents a page layout file that has gone through the prepress process, including RIPing. That is the purpose of prepress production: transforming “copy” into “a medium that is reproducible for printing,” such as a “computer to plate (CTP) file.” Id. at 1:26–38. Accordingly, in addition to the constructions we applied in the Decision on Institution, we construe “plate-ready file” to mean a file that represents a page layout that has gone through prepress processing, including RIPing, and is ready to image to a plate using either a platesetter or imagesetter.” slip op. at 9

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner seeks to exclude Mr. Suetens’ first Declaration for essentially the same reasons discussed above: that Mr. Suetens lacks personal knowledge regarding the public accessibility of Apogee. We have reviewed the First Motion and determine that Patent Owner’s objections to the First Suetens Declaration go more to the weight of the Declaration than to its admissibility. Further, we note that the public accessibility of the Apogee reference is a substantive issue that is better suited for Patent Owner’s Response than for a motion to exclude. For these reasons, we deny Patent Owner’s First Motion to Exclude.” slip op. at 17

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “§ 102, a reference must have been sufficiently accessible to the public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) 8 Paper 30, 3; Tr. 31:4–8. (internal citation and quotation marks omitted). “Whether a reference is publicly accessible is determined on a case-by-case basis based on the facts and circumstances surrounding the reference’s disclosure to members of the public.” Id. (internal citation and quotation marks omitted). “A reference is considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Id. (internal citation and quotation marks omitted). We find that Petitioner has shown by a preponderance of the evidence that Apogee was publicly accessible before the ’155 patent’s filing date. There does not seem to be any dispute that Apogee was printed at least as early as April 1998. Further, Petitioner has shown that a large number of copies were printed and distributed to Agfa subsidiaries around the world in 1998. Ex. 1024 ¶¶ 10–14, Atts. E–H. Petitioner has also proffered evidence of at least one Agfa sales representative, Mr. Jahn, publicly distributing Apogee to potential customers at conferences. Ex. 1023. Given that Apogee was created to promote the Apogee system to prospective customers, and that a very large number of copies of the reference were printed, it is reasonable to infer that many of these copies made their way into the possession of interested persons. We also credit Mr. Jahn’s testimony that an earlier version of Apogee was posted on his website before the critical date, and that he directed interested persons to that document. Although we do not rely on this version itself in considering Petitioner’s grounds of unpatentability, we consider this testimony further evidence that a person of ordinary skill, using reasonable diligence, could have gained access to the Apogee reference.” slip op. at 20

  Patent outcomesUS 6,738,155 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,738,155
• Eastman Kodak Co. / Agfa Corp. et al. v. CTP Innovations, LLCNo claims unpatentable
  PTAB · Nov 25, 2015 · IPR2014-00790 · APJ Benjamin D M Wood · IPR · Final written decision

  Claims 1–3 were not shown unpatentable because Petitioner did not establish that the proposed combinations would produce the required plate-ready file at the central service facility.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for patent owner

    “1. A printing and publishing system which generates a printing plate-ready file from data provided remotely in real time using a communication network The preamble for each of independent claims 1, 2, and 3 recites a “printing and publishing system which generates a printing plate-ready file from data provided remotely in real time.” In the Decision on Institution, we determined that “the preambles in the claims at issue, including the term ‘real time,’ do not limit the scope of the claims.” Dec. on Inst. 14. Neither Patent Owner in its Response nor Petitioner in its Reply disputed this determination. Further, we are not aware of any evidence adduced at trial that calls this determination into question. Therefore, based on our analysis in the Decision on Institution, we determine that the preambles in the claims at issue, including the term “real time,” do not limit the scope of the claims.” slip op. at 9

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

    “We agree with Patent Owner to the extent that the claim itself defines “end user facility,” “printing company facility,” and “central service facility” in terms of the particular functions they perform; e.g. the end user facility performs page building operations, the printing company facility provides printing operations, and the central service facility performs file processing and content management operations. But we maintain the view that these facilities must be distinct components of the claimed printing and publishing system. “Where a claim lists elements separately, the ‘clear implication of the claim language’ is that those elements are distinct components of the patented invention.” Becton, Dickenson and Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (internal citations and quotation marks omitted); cf. Regents of Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 935 (Fed. Cir. 2013) (holding that phrase “first and second occluding disks” means physically separate occluding disks). The Specification supports this conclusion because it consistently describes the three facilities as separate entities, each connected to the same communication network to facilitate the transfer of data between each other. See, e.g., Ex. 1001, 2:54–64, 4:26–33, Figs. 1–5.” slip op. at 10

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “§ 102, a reference must have been sufficiently accessible to the public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) (internal citation and quotation marks omitted). “Whether a reference is publicly accessible is determined on a case-by-case basis based on the facts 8 Paper 35, 3; Tr. 31:4–8. and circumstances surrounding the reference’s disclosure to members of the public.” Id. (internal citation and quotation marks omitted). “A reference is considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Id. (internal citation and quotation marks omitted). We find that Petitioner has shown by a preponderance of the evidence that Apogee was publicly accessible before the ’349 patent’s filing date. There does not seem to be any dispute that Apogee was printed at least as early as April 1998. Further, Petitioner has shown that a large number of copies were printed and distributed to Agfa subsidiaries around the world in 1998. Ex. 1025 ¶¶ 10–14, Atts. E–H. Petitioner also has proffered evidence of at least one Agfa sales representative, Mr. Jahn, publicly distributing Apogee to potential customers at conferences. Ex. 1024. We also credit Mr. Jahn’s testimony that an earlier version of Apogee was posted on his website before the critical date, and that he directed interested persons to that document. Although we do not rely on this version itself in considering Petitioner’s grounds of unpatentability, we consider this testimony evidence that a person of ordinary skill, using reasonable diligence, could have gained access to the earlier version Apogee, which reasonably would have led that person to the updated version. Given that Apogee was created to promote the Apogee system to prospective customers; a very large number of copies of the reference were printed, at least some of which were distributed at conferences and trade shows; and an earlier, substantively identical version was publicly available in electronic form on the internet; we find that Apogee was publicly accessible before the critical date.” slip op. at 21

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner seeks to exclude Mr. Suetens’ first Declaration for essentially the same reasons discussed above: that Mr. Suetens lacks personal knowledge regarding the public accessibility of Apogee. We have reviewed the First Motion and determine that Patent Owner’s objections to the First Suetens Declaration go more to the weight of the Declaration than to its admissibility. Further, we note that the public accessibility of the Apogee reference is a substantive issue that is better suited for Patent Owner’s Response than for a motion to exclude. For these reasons, we deny Patent Owner’s first motion to exclude.” slip op. at 18

  Patent outcomesUS 6,611,349 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,611,349
• Eastman Kodak Co. / Agfa Corp. et al. v. CTP Innovations, LLCAll claims unpatentable
  PTAB · Nov 25, 2015 · IPR2014-00789 · APJ Benjamin D M Wood · IPR · Final written decision

  Claims 1–9 are unpatentable as obvious over Jebens, Apogee, and OPI White Paper; specified claims are also obvious over the two Dorfman-based combinations.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for patent owner

    “1. “A printing and publishing system providing . . . services to system subscribers in real time using a communication network” The preamble for independent claim 1 recites a printing and publishing system providing services to system subscribers “in real time.” In the Decision on Institution, we determined that “the preambles in the claims at issue, including the term ‘real time,’ do not limit the scope of the claims.” Dec. on Inst. 13. Neither Patent Owner in its Response nor Petitioner in its Reply disputed this determination. Further, we are not aware of any evidence adduced at trial that calls this determination into question. Therefore, based on our analysis in the Decision on Institution, we determine that the preambles in the claims at issue, including the term “real time,” do not limit the scope of the claims.” slip op. at 8

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

    “We agree with Patent Owner to the extent that the claim itself defines “end user facility,” “printing company facility,” and “central service facility” in terms of the particular functions they perform; e.g. the end user facility performs page building operations, the printing company facility performs imposition and generates a plate-ready file, and the central service facility performs content management operations. These functions are not limiting; for example, the printing company facility obviously would also perform platemaking and offset printing functions. But we maintain the view that these facilities must be distinct components of the claimed printing and publishing system. “Where a claim lists elements separately, the ‘clear implication of the claim language’ is that those elements are distinct components of the patented invention.” Becton, Dickenson and Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (internal citations and quotation marks omitted); cf. Regents of Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 935 (Fed. Cir. 2013) (holding that phrase “first and second occluding disks” means physically separate occluding disks). The Specification supports this conclusion because it consistently describes the three facilities as separate entities, each connected to the same communication network to facilitate the transfer of data between each other. See, e.g., Ex. 1001, 2:54–64, 4:26–33, Figs. 1–5.” slip op. at 9

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “publicly accessible is determined on a case-by-case basis based on the facts and circumstances surrounding the reference’s disclosure to members of the public.” Id. (internal citation and quotation marks omitted). “A reference is considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Id. (internal citation and quotation marks omitted). We find that Petitioner has shown by a preponderance of the evidence that Apogee was publicly accessible before the ’155 patent’s filing date. There does not seem to be any dispute that Apogee was printed at least as early as April 1998. Further, Petitioner has shown that a large number of copies were printed and distributed to Agfa subsidiaries around the world in 1998. Ex. 1024 ¶¶ 10–14, Atts. E–H. Petitioner also has proffered evidence of at least one Agfa sales representative, Mr. Jahn, publicly distributing Apogee to potential customers at conferences. Ex. 1023. We also credit Mr. Jahn’s testimony that an earlier version of Apogee was posted on his website before the critical date, and that he directed interested persons to that document. Although we do not rely on this version itself in considering Petitioner’s grounds of unpatentability, we consider this testimony evidence that a person of ordinary skill, using reasonable diligence, could have gained access to the earlier version Apogee, which reasonably would have led that person to the updated version. Given that Apogee was created to promote the Apogee system to prospective customers; a very large number of copies of the reference were printed, at least some of which were distributed at conferences and trade shows; and an earlier, substantively identical version was publicly available in electronic form on the internet; we find that Apogee was publicly accessible before the critical date.” slip op. at 21

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner seeks to exclude Mr. Suetens’ first Declaration for essentially the same reasons discussed above: that Mr. Suetens lacks personal knowledge regarding the public accessibility of Apogee. We have reviewed the First Motion and determine that Patent Owner’s objections to the First Suetens Declaration go more to the weight of the Declaration than to its admissibility. Further, we note that the public accessibility of the Apogee reference is a substantive issue that is better suited for Patent Owner’s Response than for a motion to exclude. For these reasons, we deny Patent Owner’s First Motion to Exclude.” slip op. at 17

  Patent outcomesUS 6,738,155 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,738,155
• Eastman Kodak Co. / Agfa Corp. et al. v. CTP Innovations, LLCNo claims unpatentable
  PTAB · Nov 25, 2015 · IPR2014-00791 · APJ Benjamin D M Wood · IPR · Final written decision

  Claims 10–14 were not shown unpatentable over either asserted obviousness combination because the evidence did not show a reason to produce the plate-ready file away from the printing facility.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “§ 102, a reference must have been sufficiently accessible to the public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) (internal citation and quotation marks omitted). “Whether a reference is publicly accessible is determined on a case-by-case basis based on the facts and circumstances surrounding the reference’s disclosure to members of the public.” Id. (internal citation and quotation marks omitted). “A reference is considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Id. (internal citation and quotation marks omitted). We find that Petitioner has shown by a preponderance of the evidence that Apogee was publicly accessible before the ’155 patent’s filing date. There does not seem to be any dispute that Apogee was printed at least as early as April 1998. Further, Petitioner has shown that a large number of copies were printed and distributed to Agfa subsidiaries around the world in 1998. Ex. 1024, Atts. E–H. Petitioner has also proffered evidence of at least one Agfa sales representative, Mr. Jahn, publicly distributing Apogee to potential customers at conferences. Ex. 1023. Given that Apogee was created to promote the Apogee system to prospective customers, and that a very large number of copies of the reference were printed, it is reasonable to infer that many of these copies made their way into the possession of interested persons. We also credit Mr. Jahn’s testimony that an earlier version of Apogee was posted on his website before the critical date, and that he directed interested persons to that document. Although we do not rely on this version itself in considering Petitioner’s grounds of unpatentability, we consider this testimony further evidence that a person of ordinary skill, using reasonable diligence, could have gained access to the Apogee reference.” slip op. at 20

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner seeks to exclude Mr. Suetens’ first Declaration for essentially the same reasons discussed above: that Mr. Suetens lacks personal knowledge regarding the public accessibility of Apogee. We have reviewed the First Motion and determine that Patent Owner’s objections to the First Suetens Declaration go more to the weight of the Declaration than to its admissibility. Further, we note that the public accessibility of the Apogee reference is a substantive issue that is better suited for Patent Owner’s Response than for a motion to exclude. For these reasons, we deny Patent Owner’s First Motion to exclude.” slip op. at 17

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

    “this limitation, either the end user or the host facility must produce the plateready file and provide it to the printer. Petitioner argues that “one of ordinary skill could predictably implement Apogee at a central service facility.” Pet. Reply 4 (emphasis added). But as our reviewing court recently stated, “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden, 2015 WL 6756451, at *5 (emphasis in original) (citing InTouch Techs., Inc. v. VGO Commc’n, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). Jebens does not teach or suggest generating a “plate-ready file” as we have construed the term above, i.e., a file that “that has gone through prepress processing, including RIPing.” Apogee teaches generating a plateready file from a PDF, but does not teach or suggest providing it to a remote 8 Claim 10 only requires a “client” and a “printer” that are “remote” with respect to each other. printer. Petitioner asserts that “one of ordinary skill in the art would have been motivated to incorporate Apogee into the Jebens printing system to allow for a printing facility to produce a printing plate for offset printing.” Pet. 29. But Petitioner does not point us to any evidence—in Jebens, Apogee, or otherwise—that a person of ordinary skill in the art would have combined Jebens and Apogee in such a way that a plate-ready file would have been produced at Jebens’ host facility or end user facility rather than at its printing facility. In other words, there is no evidence that a person of ordinary skill in the art would have considered generating a plate-ready file anywhere other than where the printing plates are produced: at the printing facility. Evidence that a skilled artisan could have generated the plate-ready file at Jebens’ host facility, without any evidence of a reason why the skilled artisan would have done so, is insufficient to show obviousness. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421–23 (2007) (considering the obviousness of a claim to an adjustable automobile throttle pedal combined with an electronic sensor, holding that “[a] person having ordinary skill in the art could have combined [the adjustable pedal] with a pedal position sensor in a fashion encompassed by [the claim], and would have seen the benefits of doing so” (emphasis added)); InTouch Techs., 751 F.3d at 1352 (holding that expert witness “succumbed to hindsight bias” in basing obviousness opinion on “belief that one of ordinary skill in the art could combine these references, not that they would have been motivated to do so” (emphasis in original)). For these reasons, Petitioner has not shown by a preponderance of the evidence that claim 10, and its dependent claims 11– 14, would have been obvious over Jebens and Apogee.” slip op. at 25

  Patent outcomesUS 6,611,349 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,611,349
• International Business Machines Corporation v. Intellectual Ventures II, LLCRehearing denied
  PTAB · Nov 6, 2015 · IPR2014-00587 · APJ Meredith C Petravick · IPR · Rehearing

  The Board denied IBM’s rehearing request, leaving intact its determination that claim 1 was not shown unpatentable over Hughes and Abraham because they were not prior art.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d).” slip op. at 3

  • ExcludeOther

    “concerning the issue of inventorship and concerning Mr. Kumar’s alleged date of employment because we dismissed Patent Owner’s motion to exclude such evidence as moot. Req. 1–2. Patent Owner’s motion to exclude sought to exclude Exhibits 1032, 1034, 1035 and 1036. Paper 40. Petitioner proffered exhibit 1032 and 1034 to establish that Mr. Kumar was an inventor. Pet. Reply 11. However, it is apparent from the ’694 patent, itself, that Mr. Kumar was named as an inventor when the ’694 patent was filed. Ex. 1004, 1. Petitioner proffered exhibits 1035 and 1036 to establish that Mr. Kumar did not start work at AT&T until July 1997. Pet. Reply 11– 12. In reaching our decision, we assumed that Petitioner was correct that Mr. Kumar did not start until July 1997. See Dec. 17–18. We, thus, dismissed Patent Owner’s motion to exclude as moot because we did not rely upon exhibits 1032, 1034, 1035, and 1036 in reaching our Decision. Id. at 19. As indicated in our Decision, even assuming that Mr. Kumar, a named inventor, did not start work at AT&T until July 1997, we were not persuaded that the alleged discrepancy between Mr. Kumar’s alleged date of employment and Patent Owner’s alleged date of reduction to practice ipso facto leads to the conclusion that the claimed subject matter could not have been reduced to practice by June, 1996. See Id. at 17–18.” slip op. at 6

  • Strike new argumentDecided for patent owner

    “Petitioner further argues that consideration of Patent Owner’s argument is improper procedurally because it was first raised in Patent Owner’s motion to exclude. Req. 6–7. We acknowledge that previous Board decisions have stated that a motion to exclude is not an opportunity for submitting new arguments or a sur-reply. See Id. We, however, are not persuaded this was an abuse of our discretion that requires us to modify our decision to determine that Petitioner’s argument outweighs Patent Owner’s evidence of prior invention. We note that Patent Owner responded to Patent Owner’s argument regarding inventorship in its opposition to Patent Owner’s motion to exclude and had an opportunity to respond to the issue during oral argument. See Paper 48, 5–6; Paper 54, 14–16, 20–24.” slip op. at 7

  None
  Patents in suitUS 6,826,694
• Fca US LLC v. Jacobs Vehicle Systems, Inc.Institution denied
  PTAB · Oct 23, 2015 · IPR2015-01234 · APJ Richard E Rice · IPR · Institution

  The Board denied review of claims 38–42, 44, and 45 because Patent Owner had statutorily disclaimed all challenged claims before institution.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied

    “which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). We determine that Patent Owner has filed statutory disclaimers under 35 U.S.C. § 253(a) in compliance with 37 C.F.R. § 1.321(a), disclaiming all of challenged claims 38–42, 44, and 45 of the ’492 Patent. Ex. 3001. Accordingly, no inter partes review will be instituted based on the challenged claims. See 37 C.F.R. § 42.107(e).” slip op. at 2

  • Adverse judgmentAdverse judgmentDecided for patent owner

    “We further determine that Patent Owner’s statutory disclaimers, which were filed prior to institution of a trial in this case, should not be construed as a request for adverse judgment. Under 37 C.F.R. § 42.73(b), “[a] party may request judgment against itself at any time during a proceeding” and “[a]ctions construed to be a request for adverse judgment include . . . (2) [c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial” (emphasis added). The term “trial” in 37 C.F.R. § 42.73(b)(2) means “a contested case instituted by the Board based upon a petition.” See 37 C.F.R. § 42.2. Nothing in 37 C.F.R. § 42.73(b)(2) requires us to construe Patent Owner’s statutory disclaimers as a request for adverse judgment prior to institution of a trial.” slip op. at 3

  None
  Patents in suitUS 6,883,492
• Igb Automotive Ltd. / I.G. Bauerhin GmbH v. Gentherm GmbHSome claims unpatentable
  PTAB · Oct 21, 2015 · IPR2014-00668 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 1–3, 6, 14–15, 17, 21, and 23–26 are unpatentable as anticipated by Gendron; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

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

    “We are mindful of the evidence cited by Gentherm, both intrinsic and extrinsic, as to the meaning of “adjacent.” We do not discern, however, that the evidence imposes a requirement of immediate or direct contact between components, such as layers, that are adjacent. To that end, we observe that other extrinsic sources provide additional context for the ordinary meaning of “adjacent.” For instance, one dictionary sets forth that the meaning of the term “adjacent” may include “nearby” and, in its discussion of synonyms of “adjacent,” explains that the term “may or may not imply contact but always implies absence of anything of the same kind in between.”7 In that respect, the ordinary meaning of “adjacent” in the context of layers would include non-contacting layers that are close to or nearby one another, but are not separated by an intervening layer. We conclude that such ordinary meaning is consistent with the Specification of the ’576 patent, as well as the evidentiary record as a whole that is before us. Accordingly, we construe “adjacent” in connection with layers of the ’576 patent as including non-contacting layers that lie close or nearby one another, but excluding the presence of an intervening layer between those non-contacting layers.” slip op. at 8

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). There is evidence in the record before us that reflects the knowledge level of a person with ordinary skill in the art. Gentherm’s Declarant, Dr. James G. Rice, attests that a person with ordinary skill in the art would have the following background or experience:  Vocational training in mechanical or electrical engineering or related field plus 3-4 years of experience designing consumer heating, cooling, or ventilation systems; or  a B.S. in mechanical or electrical engineering or related field, plus 1-2 years of experience designing consumer heating, cooling, or ventilation systems Ex. 2002 ¶ 34. 10 The court in Graham further noted “[s]uch secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.” 383 U.S. at 18. In this proceeding, however, evidence of “secondary considerations” has not been offered for evaluation by the panel. IGB does not dispute Dr. Rice’s assessment of the level of ordinary skill in the art. For purpose of this Final Written Decision, we accept Dr. Rice’s characterization of the level of ordinary skill in the art.” slip op. at 19

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “We are cognizant of Dr. Rice’s testimony in favor of the opposite conclusion. See Ex. 2002 ¶¶ 53–55. For example, Dr. Rice generally opines that “[o]ne of ordinary skill would understand that Gendron’s extension 16 does not need to be an extension of any of the various pad layers.” Id. ¶ 55. We are not persuaded, however, that Dr. Rice provides adequate underlying support for his opinion. To that end, we also are not satisfied that Dr. Rice has taken into account appropriately the express teachings of Gendron concerning the composition of extension 16, including those discussed above. Accordingly, in considering the record before us, we conclude that Gendron discloses the “tongue portion” and “tongue” features required by claims 1–3, 6, 14–17, and 21–27.” slip op. at 13

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

    “At the outset, we observe that IGB’s anticipation ground does not rest on a theory that Gendron’s extension inherently includes the layers. Rather, IGB bases its anticipation theory on the express disclosures of Gendron, itself. Pet. 24–25. To that end, Gendron makes clear that back portion 12, bottom portion 14, middle portion 15 and extension 16 “are formed as an integral member.” Ex. 1005, 2:13–15. Gendron’s Figure 2 is described as showing a front view of a “ventilated seat pad,” and that Figure depicts all of elements 12, 14, 15, and 16. Furthermore, during oral argument, and after inquiry from the panel, counsel for Gentherm agreed that Gendron’s pad includes all of those elements, including extension 16.9 Thus, there is no dispute that pad 10 includes extension 16. Gendron’s Figure 3 is described as “an enlarged sectional view of the ventilated seat pad of FIGS. 1 and 2, illustrating five layers.” Id. at 2:54–55. A reference stands for all of its specific teachings, as well as the inferences one of ordinary skill in this art reasonably would have been expected to draw therefrom. In re Fritch, 972 F.2d 1260, 1264–65 (Fed. Cir. 1992). In this case, given at least the above-noted disclosures of Gendron, we conclude that a skilled artisan would infer reasonably that because extension 16 is disclosed as a part of pad 10, which includes five layers, and extension 16 is formed as an “integral member” with the other pad components, the extension also is composed of the layers.” slip op. at 12

  Patent outcomesUS 6,840,576 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 6,840,576
• Boston Scientific Corporation v. Uab Research FoundationInstitution denied
  PTAB · Oct 19, 2015 · IPR2015-01038 · APJ James A Worth · IPR · Institution

  The Board denied institution because Petitioner failed to show a reasonable likelihood that claims 1–20 would have been obvious over Nickolls, Adams, and the knowledge of an ordinarily skilled artisan.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “To institute an inter partes review, we must determine that the argument and evidence presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we do not institute an inter partes review for the challenged claims.” slip op. at 2

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

    “II. ANALYSIS A. Claim Construction Petitioner proposed constructions of “antitachycardia pacing” and “control circuit.” Pet. 8. Patent Owner disputes the construction of “antitachycardia pacing.” Prelim. Resp. 4–5. We determine that none of the terms in the challenged claims requires express construction for purposes of this Decision in order to resolve the issues presented by the Petition. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 5

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

    “We agree with the Patent Owner that Petitioner does not explain why a person of ordinary skill in the art would have looked to the atrial defibrillator of Adams for placement of leads for antitachycardia pacing to the left ventricle. Although Adams discloses pacing to the right ventricle in the context of bradycardia, and discloses sense electrodes on the left ventricle, that does not necessarily suggest the placement of leads for delivery of energy to the left ventricle. The fact that sense electrodes were known in the art does not explain why a person of ordinary skill in the art would have performed the combination of electrodes in this manner for the delivery of energy to the left ventricle, or would have looked to Adams for the placement of leads to deliver energy to that location. Relying on the Declaration of Dr. Benditt, Petitioner contends that Nickolls would have informed the placement of electrodes for the delivery of energy to the left ventricle (Pet. 28 (citing Ex. 1006 ¶¶ 201–216, 245– 47)), but that again begs the question as to why a person of ordinary skill would then have looked to Adams for the placement of electrodes for delivering energy. Further, Petitioner does not present sufficient evidence that it would have been predictable to substitute the transvenously-placed lead and electrode of Adams for the lead and patch electrode of Nickolls. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.”). Having reviewed the Declaration, we agree with Patent Owner that Petitioner’s reasoning for the combination of references is conclusory and does not state a reasonable likelihood of prevailing on its assertion of obviousness.” slip op. at 12

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

    “Patent Owner argues that Adams “explicitly discourages” placement of a stimulation electrode on the surface of the left ventricle when Adams “explains that the disclosed defibrillator is specifically designed to confine the delivery of electrical energy to the atria and avoid the delivery of electrical energy to the ventricles.” Prelim. Resp. 14–16 (citing Ex. 1010, 2:45–50, 2:17–23, 5:48–61, 14:27–31, 17:61–64). On this basis, Patent Owner urges that Adams teaches away from the invention of the ’563 patent. Id. at 15–16 (citing Optivus Tech., Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (“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. . . .”)). We disagree with Patent Owner’s assertion that Adams broadly teaches away from providing electrical energy to the ventricles inasmuch as Adams explicitly discloses providing bradycardia pacing to the right ventricle. Ex. 1010, 7:12–17, 7:39–46, 8:7–19. However, we agree with Patent Owner that Adams discloses that the delivery of atrial defibrillation is directed to the atria in such a manner as to minimize delivery of electrical energy to the ventricles during the atrial defibrillation, i.e., in order to reduce the risk of inducing ventricular fibrillation. Ex. 1010, 1:21–24, 2:17–23.” slip op. at 10

  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 6,266,563

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.