- International Flavors & Fragrances Inc. v. Zoomessence, Inc.All claims unpatentablePTAB · Dec 14, 2016 · IPR2015-01418 · APJ Mitchell G Weatherly · IPR · Final written decision
Claims 1, 16, 19, and 28–30 are unpatentable: claims 1, 16, and 19 are anticipated by Merritt and also obvious over two combinations; claims 28–30 are obvious over specified combinations.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Id. at 2:8–14. The Specification describes a similar cooling effect within the drying chamber of the claimed system as follows: “It has been demonstrated that an inlet air temperature of about 40° C. may result in an outlet air temperature of about 32° C. from the drying chamber 107.” Id. at 7:35–37. Based on these disclosures, we understand that drying fluid is hotter at the inlet than it is at the outlet. Accordingly, claims that recite the temperature of drying fluid “at introduction into the drying chamber,” e.g., claims 4 and 5, effectively limit the highest permitted temperature of the drying fluid, which includes “air,” at any point in the drying chamber. Claim 1 recites an upper limit of 100°C on the temperature of one component of the drying fluid, “air,” without limiting the location at which the temperature is measured. We conclude, therefore, that the upper limit of 100°C as recited in claim 1 refers to the temperature of air measured at any location within the drying chamber, including at the outlet. Petitioner proposes that the broadest reasonable interpretation of “the drying fluid comprises air at temperature that is above freezing temperature of the liquid solvent and below 100°C” requires that “at some location within the internal volume of the drying chamber there is air at a temperature that is above the freezing temperature of the liquid solvent and below 100°C.” Pet. 7–8 (citing Ex. 1010 ¶ 46). Based on our review of claims 1–5 and the Specification, we adopt Petitioner’s interpretation.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“To establish anticipation, each limitation in a claim must be found in a single prior art reference, arranged as recited in the claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). While the limitations must be arranged or combined in the same way as in the claim, identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Moreover, a reference anticipates a claim “if it discloses the claimed invention such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.” In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995). Thus, “it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968).” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“a. Independent Claim 1 Petitioner’s challenge to claim 1 as being obvious in view of the combination of Merritt, Dobry, and Skelbæk, is based largely upon the same comparison of Merritt to the claim. See Pet. 33–37, 41–42. Nevertheless, Petitioner states, and we agree, that “[i]f there is any question about whether low temperature spray drying could be used in the encapsulation of active ingredients in a carrier, Skelbæk teaches the advantages of drying liquid drops under the supply of air having a temperature of 50–120°C.” Pet. 37 (citing Ex. 1008, Abstract, pg. 2–3.). We further agree with the rationale of Petitioner that the advantages that would have been obvious to an ordinarily skilled artisan from using the lower temperature range of Skelbæk with Merritt are “a denser, non-permeable matrix material” and to “retain high levels of flavorant.” Id. (citing Ex. 1010 ¶ 107). In addition to relying on Merritt and Skelbæk, Petitioner cites Dobry’s Figure 1 in its claim chart, which schematically illustrates a conventional spray-drying system.12 See Pet. 41–42. Patent Owner’s principle argument against obviousness over Merritt, Dobry, and Skelbæk is the same as its argument against anticipation by Merritt, i.e., that Merritt includes gas above 100°C as well as below 100°C. We have rejected this argument as a matter of claim interpretation, for the reasons set forth in Part II.D.2.a above. In addition, Patent Owner asserts that Skelbæk may not be relied upon by Petitioner for the teaching of the use of a lower temperature drying fluid in a drying chamber because Skelbæk’s spray drying process yields partially dried material that requires further drying. PO Resp. 46 (citing Ex. 1008, 6:20–24). In particular, Patent Owner points out that Skelbæk uses a fluidized bed to dry further the product leaving Skelbæk’s spray drying process. Id. 12 Dobry’s Figure 1 is virtually identical to Figure 1 in the ’388 patent. Compare Ex. 1007, Fig. 1 with Ex. 1001, Fig. 1. Figure 2 of the ’388 patent is virtually identical to Figure 1 of the ’388 patent, but merely replaces the “process heater” of Figure 1 with a “process dehumidifier.” Compare Ex. 1001, Fig. 2 with id. at Fig. 1.” slip op. at 22
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Patent Owner’s argument is unpersuasive because Watanabe’s use of excipients does not diminish Watanabe’s express suggestion to use a dehumidifier in a spray drying process. Rather, we agree with Petitioner that an ordinarily skilled artisan would have understood that a dehumidifier can be used for dehumidification purposes in spray-drying processes, even when the materials being dried differ. Further, we find that Watanabe, Merritt, and Dobry are all analogous art to the claimed invention (and to one another) inasmuch as they relate to the field of spray drying and the problem of drying. See In re Bigio, 381 F.3d 1320, 1325–26 (Fed. Cir. 2004).” slip op. at 27
Patent outcomesUS 8,939,388 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,939,388 - PTAB · Sep 30, 2016 · IPR2015-00842 · APJ James P Calve · IPR · Rehearing
The Board denied Wonderland’s rehearing request, leaving in place the finding that claims 1–5 and 8–29 are unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party challenging a final written decision in a request for rehearing must identify all matters the party believes that the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). The challenging party bears the burden of showing that the decision should be modified. Id.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“It is well-settled that “a” and “an” mean “one or more” unless a clear intent is evinced to limit those terms to just “one.” Dec. 17. In contrast to Patent Owner’s arguments in this proceeding (Req. 9–11), Patent Owner, in related district court action, repeatedly asserted that the term “an” in claim 8 can mean “one or more.” Ex. 1032, 6–7 (“it is generally accepted in patent parlance that ‘a’ or ‘an’ can mean ‘one or more.’”), 9 (“it is black-letter patent law that ‘an’ means ‘one or more’ in a patent claim.”).” slip op. at 5
Claim constructioncites Phillips - PTAB · Sep 30, 2016 · IPR2015-00841 · APJ James P Calve · IPR · Rehearing
The Board denied Wonderland’s rehearing request and declined to modify the final written decision finding claims 15–29 unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party challenging a final written decision in a request for rehearing must identify all matters the party believes that the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). The challenging party bears the burden of showing that the decision should be modified. Id.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“It is well-settled that “a” and “an” mean “one or more” unless a clear intent is evinced to limit those terms to just “one.” Dec. 17. In contrast to Patent Owner’s arguments in this proceeding (Req. 8–9), Patent Owner, in related district court action, repeatedly asserted that the term “an” in claim 8 can mean “one or more.” Ex. 1032, 6–7 (“it is generally accepted in patent parlance that ‘a’ or ‘an’ can mean ‘one or more.’”), 9 (“it is black-letter patent law that ‘an’ means ‘one or more’ in a patent claim.”).” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“baby crib, wherein each of the upright tubes has an outer wall that defines an outer contour shape of the upright tube” in claim 15 consistent with the plain language of the claims in light of the ’919 Specification. Claim 15 recites “upright tubes defining corners of the baby crib, wherein each of the upright tubes has an outer wall that defines an outer contour shape of the upright tube.” Ex. 1001, 5:7–9. We found that Bidwell discloses retaining members 22 that satisfy these claimed features. Dec. 42.” slip op. at 27
Claim constructioncites Phillips - J Squared, Inc. D/B/A University Loft Company v. Sauder Manufacturing CompanySome claims unpatentablePTAB · Jun 27, 2016 · IPR2015-00774 · APJ Linda E Horner · IPR · Final written decision
Claims 1, 2, 6–8, 10, and 11 are unpatentable over Mackey and/or Pollack II and Pollack I; claims 4, 5, 9, and 12–14 are not held unpatentable.
RulingsFinal written decision- BurdenFwd mixedMixed
“i. Conclusion - Obviousness We have weighed the entirety of the evidence in this proceeding, including J Squared’s evidence of obviousness and Sauder’s evidence of non-obviousness. On balance, we conclude that J Squared has shown by a preponderance of the evidence that the subject matter of claims 1, 2, 6‒8, 10, and 11 would have been obvious over Pollack II and Pollack I, but has not shown that the subject matter of claims 9 and 12‒14 would have been obvious over this prior art. III. CONCLUSIONS For the foregoing reasons, we determine the following: A. J Squared has shown by a preponderance of the evidence that claims 1, 2, 8, 10, and 11 are anticipated under 35 U.S.C. § 102 by Mackey; B. J Squared has not shown by a preponderance of the evidence that claims 4 and 5 are anticipated under 35 U.S.C. § 102 by Mackey; C. J Squared has shown by a preponderance of the evidence that claims 1, 2, 6‒8, 10, and 11 are unpatentable under 35 U.S.C. § 103 as obvious over Pollack II and Pollack I; and D. J Squared has not shown by a preponderance of the evidence that claims 9 and 12‒14 are unpatentable under 35 U.S.C. § 103 as obvious over Pollack II and Pollack I.” slip op. at 64
- Skill levelSkill level board ownOther
“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, 962‒63 (Fed. Cir. 1986)). The court in GPAC held that the Board did not err in in failing to make a specific finding as to the level of skill in the art and relying instead on the references of record to inform it as to the level of skill in the art. Id.; see also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown). J Squared did not proffer a specific level of skill of one of ordinary skill in the art, and relied instead on the prior art to reflect an appropriate level of skill. Tr. 78:15‒20. We find no need for testimony as to the level of skill in the art, as it is demonstrated aptly by the prior art of record. For purpose of this Final Written Decision, we resort to the prior art of record to assess the level of skill of one of ordinary skill in the art. In particular, as discussed below, the prior art explicitly proposes the combination of the teachings of the Pollack references.” slip op. at 37
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Sauder is, in essence, seeking to have the Board rewrite the claim to recite, “A combination consisting of a chair and a stool base portion.” We see no reason to narrow the claim, particularly when the body of the claim itself recites “said combination further comprises an assembly . . . .” Ex. 1001, 10:42. For these reasons, we construe “combination” to include, but not be limited to, a chair and a stool base portion.” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“We reconsider our claim interpretation in light of the additional arguments and evidence provided by Sauder in its Patent Owner Response and by J Squared in its Reply. The function called for in this means plus function claim limitation is “releasably engaging said chair to said base portion.” Ex. 1001, 12:4‒5. We think Sauder has the correct interpretation of the functional recitation of claim 12. The focus of the language of claim 12 is on the verb “engaging,” while the adverb “releasably” modifies the verb “engaging” to simply require that the engagement is effected in such a way that it is not permanent. This understanding is consistent with the claim language used in the remainder of this clause, which focuses on releasable engagement of the chair “to” the base portion. We note that during prosecution of claim 12 (application claim 20) of the ’136 patent before the examiner, Sauder amended the claim language “manually operable means for releasably engaging said chair from said base portion” to recite instead “manually operable means for releasably engaging said chair to said base portion,” thereby clearly shifting the focus of this functional language from one of disengagement to engagement. Ex. 1013, 210. Consistent with our interpretation of “engage,” we construe the term “engaging” to mean locked together. The ’136 patent describes the structure corresponding to the function of releasable engagement, i.e., locking together of the chair to the base as being effected by the claw and the latch engaging the underside of the saddle: The claw 142 (illustrated in FIGS. 9, 10, 13 and 14) extends generally downward from the frame lower portion 106, near the second portion 124 of the frame lower portion 106, and is adapted for cooperating releasable engagement with the base 300. More specifically, and as will be discussed in greater detail in subsequent paragraphs herein, the claw 142 will function so as to releasably engage with a saddle 310 of the base 300. . . . More specifically, the clip clamp latch 160 extends generally downward from the frame lower portion 106, near its first portion 122, and is adapted for cooperating releasable engagement with the base 300 and more specifically with the saddle 310 of the base, discussed further below. Ex. 1001, 5:19‒26, 5:58‒62.” slip op. at 24
Patent outcomesUS 8,585,136 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,585,136 - Baby Trend, Inc. / Denny Tsai et al. v. Wonderland Nurserygoods Co., Ltd.All claims unpatentablePTAB · Jun 27, 2016 · IPR2015-00842 · APJ James P Calve · IPR · Final written decision
Claims 1–5 and 8–29 are unpatentable as obvious over Vaiano and Pasin, alone or with Stoeckler; the contingent motion to amend is denied.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Grounds I and II: Claims 1–5 and 8–29 as obvious over Vaiano and Pasin, alone or further in combination with Stoeckler The parties dispute whether Vaiano (Ex. 1021) discloses a unitary enclosure. Patent Owner argues that it is unclear from Vaiano whether netting 32 is a continuous member. See PO Resp. 22. At the oral hearing, Patent Owner argued that Vaiano’s netting is not continuous, noting that the cross-hatch lines in the Figures from Vaiano do not match up. Tr. 73:17–20. In any event, inherency cannot be established by possibilities or probabilities. PAR Pharmaceutical, Inc. v. TWI Pharmaceuticals, Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014). Pasin (Ex. 1015) and Stoeckler (Ex. 1017) also lack a unitary enclosure member. Similarly, it is, at best, unclear how the ends of fabric 32 in Vaiano emerge from the corner posts 10. See Pet. 22 (averring that Vaiano “does not show the connection mechanisms that create the ‘exposed’ tube look”). Thus, Vaiano does not disclose two ends of fabric emerging out of a single slit, as I understand the “substantially out of contact” limitation to require. This understanding of the “substantially out of contact limitation” hinges on the above claim construction—i.e., the understanding that the transmogrification of the single “slit” limitation into the “substantially out of contact” limitation in reissue, through omission of one and introduction of the other (with concomitant clarification of Figure 5 required by the Examiner), does not permit a broadening of the claims beyond the original disclosure. Pasin and Stoeckler also fail to disclosure this limitation as they” slip op. at 102
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Grounds I and II: Claims 1–5 and 8–29 as obvious over Vaiano and Pasin, alone or further in combination with Stoeckler The parties dispute whether Vaiano (Ex. 1021) discloses a unitary enclosure. Patent Owner argues that it is unclear from Vaiano whether netting 32 is a continuous member. See PO Resp. 22. At the oral hearing, Patent Owner argued that Vaiano’s netting is not continuous, noting that the cross-hatch lines in the Figures from Vaiano do not match up. Tr. 73:17–20. In any event, inherency cannot be established by possibilities or probabilities. PAR Pharmaceutical, Inc. v. TWI Pharmaceuticals, Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014). Pasin (Ex. 1015) and Stoeckler (Ex. 1017) also lack a unitary enclosure member. Similarly, it is, at best, unclear how the ends of fabric 32 in Vaiano emerge from the corner posts 10. See Pet. 22 (averring that Vaiano “does not show the connection mechanisms that create the ‘exposed’ tube look”). Thus, Vaiano does not disclose two ends of fabric emerging out of a single slit, as I understand the “substantially out of contact” limitation to require. This understanding of the “substantially out of contact limitation” hinges on the above claim construction—i.e., the understanding that the transmogrification of the single “slit” limitation into the “substantially out of contact” limitation in reissue, through omission of one and introduction of the other (with concomitant clarification of Figure 5 required by the Examiner), does not permit a broadening of the claims beyond the original disclosure. Pasin and Stoeckler also fail to disclosure this limitation as they” slip op. at 102
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“have infringed a European patent does not lead inexorably to the conclusion that those products copied a patented design of EP 1,550,387 B1 or the ’919 patent rather than being developed independently based on industry trends and other factors. This is particularly true where the claimed features use prior art elements such as an enclosure member, frame structure, and upright tubes well known in the prior art for baby cribs as illustrated by the prior art baby crib illustrated in Figures 1 and 2 of the ’919 patent itself. The choice of having upright tubes exposed or unexposed is a binary one. Pasin and Stoeckler disclose keder connections in tents and similar play structures with exposed tubes while Vaiano, Miller, Oliphant show baby cribs with exposed tubes. These features are well-known in the art such that the selection of one feature over another involves relatively finite options that could lead to the development of an exposed tube design without copying the Wave Series or the ’919 patent. Nor does development of products with such well-known features provide a strong case for the non-obviousness of the ’919 patent. 3. Conclusion Weighing all of the evidence anew, we determine that Petitioner has” slip op. at 68
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“4. Conclusion For the foregoing reasons, Patent Owner has not, in its Motion to Amend, set forth a prima facie case for the relief requested or satisfied its burden of proof. Consequently, the current situation does not require us to consider Petitioner’s Opposition and Patent Owner’s Reply. Patent Owner’s Contingent Motion to Amend is denied.” slip op. at 88
Patent outcomesUS RE43,919 unpatentable§ 103 obviousnesscites KSR - Baby Trend, Inc. / Denny Tsai et al. v. Wonderland Nurserygoods Co., Ltd.All claims unpatentablePTAB · Jun 27, 2016 · IPR2015-00841 · APJ James P Calve · IPR · Final written decision
Claims 15–29 are unpatentable; the majority found them anticipated or obvious over the asserted prior art, and denied the contingent motion to amend.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“4. Conclusion For the foregoing reasons, Patent Owner has not, in its Motion to Amend, set forth a prima facie case for the relief requested or satisfied its burden of proof. Consequently, the current situation does not require us to consider Petitioner’s Opposition and Patent Owner’s Reply. Patent Owner’s Contingent Motion to Amend is denied.” slip op. at 86
- ExcludeMotion to exclude, deniedDenied
“E. Petitioner’s Motion to Exclude Petitioner moves to exclude testimony of Mr. Drobinski, Ms. Wang,” slip op. at 87
- Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia no nexusDecided for petitioner
“1. Evidence of Commercial Success Patent Owner argues that its Wave Series products are coextensive” slip op. at 48
- Obviousness (§103) › Objective indicia / secondary considerations › CopyingObjective indicia no nexusDecided for petitioner
“have infringed a European patent does not lead inexorably to the conclusion that those products copied a patented design of EP 1,550,387 B1 or the ’919 patent rather than being developed independently based on industry trends and other factors. This is particularly true where the claimed features use prior art elements such as an enclosure member, frame structure, and upright tubes well known in the prior art for baby cribs as illustrated by the prior art baby crib illustrated in Figures 1 and 2 of the ’919 patent itself. The choice of having upright tubes exposed or unexposed is a binary one. Pasin and Stoeckler disclose keder connections in tents and similar play structures with exposed tubes while Vaiano, Miller, Oliphant show baby cribs with exposed tubes. These features are well-known in the art such that the selection of one feature over another involves relatively finite options that could lead to the development of an exposed tube design without copying the Wave Series or the ’919 patent. Nor does development of products with such well-known features provide a strong case for the non-obviousness of the ’919 patent. 3. Conclusion Weighing all of the evidence anew, Petitioner has established the” slip op. at 66
Patent outcomesUS RE43,919 unpatentable§ 103 obviousnesscites KSR - J Squared, Inc. D/B/A University Loft Company v. Sauder Manufacturing CompanySome claims unpatentablePTAB · Jun 27, 2016 · IPR2015-00958 · APJ Linda E Horner · IPR · Final written decision
Claims 1, 2, 8, 9, and 11 are unpatentable as obvious over Yu and Clark; claims 4–7, 10, and 12–14 are not held unpatentable.
RulingsFinal written decision- Skill levelSkill level board ownOther
“J Squared did not proffer a specific level of skill of one of ordinary skill in the art, and relied instead on the prior art to reflect an appropriate level of skill. Tr. 78:15‒20. We find no need for testimony as to the level of skill in the art, as it is demonstrated aptly by the prior art of record. For purpose of this Final Written Decision, we resort to the prior art of record to assess the level of skill of one of ordinary skill in the art. In particular, as discussed below, the prior art provides the suggestion itself for the modification of Yu’s deck chair with the rocker attachment of Clark.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“J Squared asserts that “[i]t would have been obvious to one having ordinary skill in the art at the time of the invention to modify Yu to have rockers as taught by Clark, because Yu discloses a folding chair and Clark discloses a clip-on rocker attachment that is designed specifically to attach to a folding chair.” Pet. 25. J Squared posits that “[a] skilled person would obviously size and position the front clips appropriately to fit onto Yu’s front legs when the rear clips are on Yu’s transverse rear bar,” and that “[w]ith Clark’s rockers attached, Yu’s chair would have base legs that naturally function as rockers when the chair is on the floor.” Id. at 26. J Squared further notes that “[t]he clip-on rocker attachment could be attached indefinitely, i.e., in both the first and second configurations and while changing from one to the other.” Id. J Squared also contends that “[t]he claimed invention is merely a combination of known prior art elements according to known methods to yield predictable results.” Id. We agree with J Squared that there is sufficient motivation found in the references themselves for the proposed combination of teachings from Yu and Clark. Both Yu and Clark are directed to folding deck chairs, and Clark demonstrates that it was desirable at the time of the invention to have a deck chair that is structured to function as a rocking chair. Further, we agree with J Squared that the clip-on rocker attachment of Clark could be attached indefinitely, i.e., in both the first and second configurations and while changing from the office chair configuration to the deck chair configuration. Sauder has not provided persuasive evidence to contradict this finding. We agree with J Squared’s reasoning that the modification of Yu with the rocker rails of Clark is merely a combination of known prior art elements according to known methods to yield predictable results.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“legs of Yu’s foldable deck chair after it has been detached from its pedestal base “would lock the legs in place and prohibit the folding character of Yu’s deck chair that [Yu] deems critical to its intended function.” PO Resp. 24 (citing Ex. 1002, Figs. 5, 6; Ex. 2039, 12:36‒37; Ex. 2072, 80). We disagree with Sauder’s reading of Yu. We find no asserted criticality to the folding aspect of Yu’s deck chair. Instead, we understand Yu to focus on the dual-purpose nature of the chair, serving as both an “office chair” and, when unfastened from the base, the seat structure 10 capable of use as a “deck chair.” Ex. 1002, 1:19‒27, 2:22‒31. Although Figure 6 of Yu depicts the seat structure 10 in a folded configuration, this is nowhere described in Yu as a critical feature of Yu’s chair. Even if the proposed modification were to render the seat structure 10 incapable of being folded, the proposed modification also improves Yu’s seat structure 10 by rendering it capable of being used as a rocker, an improvement that was, as evidenced by Clark, desirable in the art of lawn chairs. See In re Urbanski, 809 F.3d 1237, 1244 (Fed. Cir. 2016) (affirming a determination of obviousness based on motivation of one of ordinary skill to pursue the desirable properties taught by a secondary prior art reference, even at the expense of foregoing a benefit taught by a primary reference). We also disagree with Sauder’s contention that the proposed modification would render Yu’s chair unfit for its intended purpose. PO Resp. 24 (citing In re Gordon, 733 F.2d 900 (Fed. Cir. 1984)). In Gordon, the Board affirmed an examiner’s rejection of a claim directed to a blood filter with an inlet and outlet on the bottom over the prior art, French, which taught a gasoline filter with the inlet and outlet on the top. 733 F.2d at 901. The Board reasoned that “it would have been obvious to turn the French device upside down to have both the inlet and outlet at the bottom, rather than at the top.” Id. at 902. The Federal Circuit reversed, noting that “French teaches a liquid strainer which relies, at least in part, upon the assistance of gravity to separate undesired dirt and water from gasoline and other light oils.” Id. (explaining that “if the French apparatus were turned upside down, it would be rendered inoperable for its intended purpose”). Yu’s chair, as modified to include the rocker attachment of Clark, would still be capable of functioning as a dual purpose chair. Further, Clark provides the motivation to modify Yu’s chair and suggests the desirability of such a modification, and Sauder’s claims do not require the benefit (foldability) of Yu that is arguably lost by modification with the rocker attachment of Clark.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner
“Sauder asserts that the modification is based on impermissible hindsight “because neither Yu nor Clark teaches a non-folding chair or a top chair whose legs function as a rocker.” Id. at 24‒25. Sauder’s claims do not call for a non-folding chair, and Clark discloses the applicability of its rocker attachment to a folding chair, akin to the folding chair of Yu. This disclosure in Clark provides a suggestion in the prior art itself to apply the teachings of Clark to the chair of Yu. As such, impermissible hindsight is not being employed in the proposed combination.” slip op. at 22
Patent outcomesUS 8,585,136 mixed§ 103 obviousnesscites KSRPatents in suitUS 8,585,136 - Terumo BCT, Inc. v. Noble House Group Party Ltd.All claims unpatentablePTAB · Jun 24, 2016 · IPR2015-00379 · APJ Josiah C Cocks · IPR · Final written decision
Claims 6, 14, and 16 are unpatentable under § 103(a) over the SSK Pamphlet and Ishida because their combination renders the claimed sampling apparatus obvious.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“review, we determined that no terms of the claims of the ’921 patent acquired any special meaning. Thus, all terms were afforded their broadest reasonable meaning as would be understood by a person of ordinary skill in the art in light of the Specification. Inst. Dec. 6. We made explicit that meaning for a single claim term: “frangible barrier.” Id. In that regard, we determined that the ordinary meaning of “frangible barrier” is a “seal that impedes the flow of a fluid until physically broken.” Id. Neither party offers an alternative construction for the term “frangible barrier,” and based on the record developed during trial, we do not alter the meaning expressed above.” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“TBCT submits that a person having ordinary skill in the relevant art would be: a medical device designer with a Bachelor of Science degree in engineering, such as mechanical, industrial, biomedical engineering, or an equivalent technical degree with at least 5-7 years of experience in the field; or a person with an advanced degree in bio-medical engineering, with fewer years of experience, but at least some years of experience in the field; or a person who has worked in the field for at least 15 years. (Ex. 1007, ¶¶ 13-17.)” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artDecided for petitioner
“a. The SSK Pamphlet4 The SSK Pamphlet is a document described as being directed to “Bacterial Detection Ancillaries,” and discloses a “SampLok Sampling Kit (SSK)” and a “Platelet transfer kit.” Ex. 1005. A portion of the SSK Pamphlet is reproduced below: 4 In instituting trial, we were satisfied, on the record that was before us, that the SSK Pamphlet constituted prior art. Inst. Dec. 10–11. Noble does not challenge that determination in its Patent Owner Response. Neither does the record, as developed during trial, give reason to revisit that determination in connection with this Final Written Decision. Accordingly, we regard the SSK Pamphlet as prior art to the ’921 patent.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“blood collecting or sampling devices are understood in the art as incorporating a clamp assembly operable to close off an inlet tube during the operation of the device, in conjunction with additional tube sealing components. Indeed, the SSK Pamphlet contemplates two such additional seals, namely: (1) a seal at the tube end formed “at manufacture”; and (2) a heat seal applied at some time at the position designated “heat seal location.” In similar fashion, Ishida conveys that, in addition to clamping components such as clamp 33, sealing member 93 is employed for inhibiting flow within blood collecting apparatus 1. Thus, the prior art unmistakably conveys that clamps operating together with additional types of seals were known in blood collecting/sampling devices. Noble’s contradictory position does not reflect appropriate consideration of how a person of ordinary skill in the art would have viewed the teachings of the prior art. In that respect, Noble does not reconcile its position to the contrary with the clear and unambiguous teachings of the prior art.” slip op. at 10
Patent outcomesUS 8,777,921 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,777,921 - PTAB · Jun 9, 2016 · IPR2016-00413 · APJ Linda E Horner · IPR · Institution
The Board denied institution because Petitioner failed to show a reasonable likelihood that claims 1–21 were unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“III. CONCLUSION For the foregoing reasons, we determine that the information presented in the Petition fails to establish a reasonable likelihood of prevailing in showing that claims 1‒21 are unpatentable. IV. ORDER After due consideration of the record before us, it is: ORDERED that no inter partes review of the ’787 patent is instituted and that all grounds set forth in the Petition challenging the ’787 patent are denied.” slip op. at 31
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“reasonable construction of “pedestal” should include a four-legged base for a chair. Pet. 9. Sauder argues that “the term ‘pedestal’ is unambiguously and narrowly defined and distinguished from other types of bases in the [’]787 Patent.” Prelim. Resp. 17 (citing Ex. 1001, 7:9‒19). Sauder further asserts that “a pedestal has a single columnar support.” Id. (citing Ex. 1001, Figs. 2‒4, 22, 23, 7:1‒44, 9:54‒62). The ’787 patent distinguishes a pedestal base from a legged base and a sled base. In particular, the ’787 patent describes that “[o]ne having ordinary skill in the art understands that a broad variety of adaptations of chair bases, including categories of legged, sled, and pedestal, are available to support a chair frame above the supporting surface.” Ex. 1001, 7:13‒17. Based on this description in the specification, we find that one of ordinary skill in the art would understand that a pedestal base does not encompass a chair base that has four downwardly projecting legs. For purposes of institution, we do not need to reach the question of whether a chair having more than one vertical columnar support (e.g., two vertical supports from which base legs extend) qualifies as a pedestal base.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“As noted supra, Kassai’s spring-biased latch mechanism is disclosed for attaching a tray table to a child’s high chair. We find no explicit suggestion in Kassai itself to use such a latch mechanism for coupling other parts of a chair, such as a chair and base. Further, J Squared’s articulated reasons to modify Yu’s deck chair, as modified by Clark, to substitute Kassai’s latch mechanism in place of Yu’s bolts, based on simple substitution of one known fastener element for another to obtain predictable results and as a matter of common sense to enable easier, faster or more convenient conversion of the convertible chair, are not supported by adequate evidence to demonstrate a reasonable likelihood of unpatentability. In particular, J Squared has not provided adequate explanation or evidence to persuade us that one having ordinary skill in the art would have been led to use the latch mechanism of Kassai to attach the deck chair to the base of Yu. J Squared provides insufficient evidence or reasoning to show that one of ordinary skill in the art, aware of the safety considerations involved with coupling a chair to a base, would have been motivated to replace the bolts of Yu with such a latch mechanism. See Ex. 1001, 5:48‒54 (describing user safety considerations to ensure that the chair portion will not tilt or rotate backward apart from the base); Ex. 2008, 18‒19 (Mr. Warncke testifying that “vital elements of a well-designed and effective releasable coupling system include safety, error-proofing, and ease of use” and that safety for releasably coupled components “means that when coupled, it cannot be decoupled without intentional manual interaction with the chair”). Further, J Squared provides no declaratory evidence from one having ordinary skill in the art to demonstrate that the modification would have been a matter of common sense or would have led to a predictable result.” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“The Figures of Higgins show only a side view of the child’s rocker chair portion. Higgins does not describe in the patent the method of construction of the frame and rocker supports, or describe that the rocker supports are “directly beneath and attached to” the undersurface of a seat portion of the chair, as recited in claim 14. We cannot discern with any reasonable likelihood that the rocker supports of Higgins are disposed directly beneath, as opposed to being below, but to the outside of, the undersurface of a seat portion of the chair. Further, J Squared has not provided adequate evidence to demonstrate that the frame structure of Higgins’s chair extends upwardly from the rocker members along and “attached to” the rear surface of the backrest or that the frame structure “structurally join[s]” the seat and backrest portions, as recited in claim 14. Id.; see also Prelim. Resp. 29 (“Higgins[] has no separate frame joining the seat and backrest”). For these reasons, J Squared has failed to show by a reasonable likelihood that Higgins anticipates independent claim 14 and its dependent claim 15. Accordingly, we decline to institute a review of claims 14 and 15 under 35 U.S.C. § 102(b) as anticipated by Higgins.” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,960,787 - Edmit Industries, Inc. v. Smartdoor Holdings, Inc.All claims unpatentablePTAB · Mar 29, 2016 · IPR2015-00013 · APJ James A Worth · IPR · Final written decision
Claims 16–17 are unpatentable over Shea and Burke; claim 18 over Shea, Burke, and O’Brien; and claim 27 over Shea, Burke, and Leivenzon. The motion to amend is denied.
RulingsFinal written decision- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Patent Owner disagrees for three reasons. First, Patent Owner implies that Burke is not analogous art because Burke does not disclose a door. See PO Resp. 6. Art is analogous when it is: (1) from the same field of endeavor as the claimed invention; or (2) reasonably pertinent to the particular problem faced by the inventor, if the art is not from the same field of endeavor. See In re Bigio, 381 F.3d 1320, 1325–26 (Fed. Cir. 2004). In this case, as observed by Petitioner’s Declarant, Burke expressly describes an application “as in cases where an electrical braking action is required.” Ex. 1004 ¶ 25 (quoting Ex. 1003, 1:18–22). Thus, even under Patent Owner’s argument that Burke is not specific to the field of doors, we agree with Petitioner’s Declarant that Burke is relevant to the problem of braking in electrified devices. Burke discloses an approach to that problem by absorbing energy from a motor, operated as a generator, for the purpose of braking. Ex. 1003, 1:16–25, 3:11–12.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“brake shoes based on the application of centrifugal force. Ex. 1009, 5:59– 63. Petitioner’s assertion is that a person of ordinary skill would have found it obvious to use a different braking mechanism as a substitute for a governor to achieve the same function. In particular, Petitioner proposes substitution of the frictional braking mechanism of Shea (i.e., a braking mechanism that is purely mechanical), with the dissipative braking mechanism of Burke (i.e., a braking mechanism that also converts mechanical energy to electrical energy). In this case, the fire door of Shea, with the motor/generator of Burke substituted for the motor/governor of Shea, would operate to blunt or slow the movement of the door on descent while allowing the door to close. See Ex. 1004 (Haas Decl.) ¶ 26. We determine that the asserted combination of Shea and Burke would operate in the same manner as the fire door of Shea—to slow the movement of the door, while allowing the door to close under the force of gravity. Id. ¶ 24. We agree with Petitioner’s Declarant that this would have been an obvious substitution as the use of a known technique to improve functionality. See id. ¶ 26. Petitioner’s proposed combination is thus the substitution of an electrical component for an analog component, which does not destroy the principle of operation because it does not destroy the overall principle of operation of the device. See Mouttet, 686 F.3d at 1332. We conclude that this type of fitting together of teachings would have been obvious to a person of ordinary skill in the art. KSR, 550 U.S. at 420 (“a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle”). Viewing the evidence as a whole, we conclude that a person of ordinary skill in the art would have applied the teachings of Burke regarding regenerative braking to the fire door of Shea in order to improve operation of the door and to make use of excess energy from rotation. We are further persuaded by Petitioner’s arguments that Burke teaches that the braking can have the additional advantage of powering another device and that a person of ordinary skill would have sought a substitution of components in order to achieve the advantages of Burke’s motor/generator. See Pet. Reply 11–12 (quoting Randall Mfg., 733 F.3d at 1363 (“doing so would allow the designer to achieve the other advantages of the Aquino assembly while using a stowage strategy that was very familiar in the industry”)).” slip op. at 15
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“However, the additional limitations would not avoid unpatentability because Burke and O’Brien both use a motor/generator system, O’Brien’s motor/generator uses DC power (Ex. 1008, 5:15), Burke and O’Brien both use regenerative braking, and Burke recites the charging of a storage battery by the motor/generator which is capable of braking (Ex. 1003, 3:4–16). Therefore, the asserted combination of Shea, Burke, and O’Brien already contains the features recited as additional limitations in proposed substitute claim 40 (and the similar recitations in proposed substitute claims 41 and 42). We have already concluded supra, that the combination of Shea, Burke, and O’Brien would have been obvious to a person of ordinary skill in the art. Patent Owner does not explain why the additional recitations of its proposed substitute claims would have been nonobvious over this combination. Mot. Amend 4–14. Patent Owner argues that the combination of Shea and Burke would not make use of a DC battery by itself to open or close a door. Id. at 11–12. However, nothing in the additional limitations of proposed substitute claims 40–42 requires that a DC battery provide power to open or close a door without an additional power supply (as discussed above with respect to claim 16). More importantly, the combination of Shea, Burke, and O’Brien would make use of the DC-powered components—the DC motor/generator of O’Brien. Ex. 1008, 5:4–15. Burke discloses using the motor/generator to charge a battery with the regenerated energy. Ex. 1003, 3:12–13. Therefore, the combination of Shea, Burke, and O’Brien already contains the elements of the additional limitations. We conclude that Patent Owner has not met its burden of proving that the additional recitations of proposed substitute claims 40–42 would have been nonobvious over this combination. See Paper 15, 4–16.9” slip op. at 23
- Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteDecided for patent owner
“As to Petitioner’s argument that proposed substitute claim 43 is indefinite, we determine that the term “substantially uniform speed” is reasonably clear to a person of ordinary skill when read in context of the entire claim limitation and disclosure, which requires the application of “more and more braking” to compensate for the dynamics of the door during closing, e.g., to offset the potential for acceleration due to gravity. Ex. 1001, 12, 19–29; see In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014).” slip op. at 25
Patent outcomesUS 6,484,784 unpatentable§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 6,484,784
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.