• Adlens USA, Inc. / Adlens, Ltd. v. Superfocus Holdings LLC, Superfocus, LLC, Insolvency Services Group, Inc., And Dr. Stephen KurtinAll claims unpatentable
  PTAB · Dec 27, 2016 · IPR2015-01824 · APJ Elizabeth M Roesel · IPR · Final written decision

  Claims 1–5 are unpatentable as obvious under § 103 over Kurtin ’532 and Kurtin ’629 in view of Gordon and/or Cronin.

  RulingsFinal written decision

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

    “1. “manually adjustable” (claim 1) Patent Owner contends that this term should be construed to mean “capable of being manually adjusted by a wearer of the spectacles.” PO Resp. 7. Petitioner contends that Patent Owner’s proposed construction improperly incorporates an extraneous limitation—by a wearer—into the claims. Pet. Reply 6. We agree with Petitioner. Claim 1 of the ’797 Patent expressly recites “by a wearer” (Ex. 1002, 4:46), but there is no such limitation in either of claims 1 or 4 of the ’487 Patent. Patent Owner identifies various specification passages discussing adjustment by a wearer or user. PO Resp. 7–8. None of these passages amounts to an express definition or disclaimer requiring that “by a wearer” be read into the claims not reciting that phrase. Bigio, 381 F.3d at 1325 (“[T]his court counsels the PTO to avoid the temptation to limit broad claim terms solely on the basis of specification passages.”).” slip op. at 8

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

    “Our reviewing court instructs that “merely because an element does not include the word ‘means’ does not automatically prevent that element from being construed as a means-plus-function element.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc) (quoting Cole v. Kimberly-Clark Corp., 102 F.3d 524, 531 (Fed.Cir.1996)). “Generic terms such as ‘mechanism,’ ‘element,’ ‘device,’ and other nonce words that reflect nothing more than verbal constructs may be used in a claim in a manner that is tantamount to using the word ‘means’ because they ‘typically do not connote sufficiently definite structure’ and therefore may invoke § 112, para. 6.” Id. at 1350. We agree with Patent Owner that the term, “adjustable connector” (claims 1 and 4), should be construed as a means-plus-function term. The word “connector” is “tantamount to using the word ‘means’” because it is a generic description that does not connote a definite structure. Williamson, 792 F.3d at 1350. Dr. Savidis agrees that the term, “adjustable connector,” is a generic term that does not define a particular structure. Ex. 2003, 82:15–84:8. Accordingly, we construe this term in accordance with 35 U.S.C. § 112 ¶ 6.” slip op. at 9

  • Skill levelSkill level board ownDecided for petitioner

    “B. Person of Ordinary Skill in the Art We determine that a person of ordinary skill in the art would have an undergraduate degree in mechanical engineering or equivalent education and one to two years of experience with optics. Our determination is supported 3 The parties dispute whether the corresponding structure disclosed in the ’487 Patent Specification includes a flexure. PO Resp. 11 (citing Ex. 1001, 4:34–37); Pet. Reply 7 n.2. It is not necessary for us to resolve this dispute because a flexure is not relevant to any ground of unpatentability raised in the Petition. by the testimony of Dr. Plummer (Ex. 2002 ¶ 49), as well as the testimony of Dr. Savidis (Ex. 2003, 66:24–67:7, 67:16–20, 69:14–20). We also rely on Petitioner’s asserted references as establishing the level of skill in the art at the relevant time. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Based upon their stated qualifications, we consider both Dr. Savidis and Dr. Plummer qualified to opine from the viewpoint of a person of ordinary skill in the art regarding the subject matter of the ’487 Patent. Ex. 1002 ¶¶ 5–11, Appendix A (Savidis CV); Ex. 2002 ¶¶ 9–22, Attachment A (Plummer CV).” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “We find that a person of ordinary skill in the art would have had a reason or motivation to modify the spectacles of Kurtin ’532 to provide independent adjustability of each lens. Our finding is supported by the undisputed testimony of Dr. Savidis that “the desirability of having independently and manually adjustable, liquid filled, variable focus lenses was known in the art well prior to 2010.” Ex. 1003 ¶ 77. Our finding is further supported by Dr. Savidis’ testimony that both Gordon (Ex. 1007) and Cronin (Ex. 1006) describe adjustable, liquid filled, variable focus eyeglasses in which each eye’s lens can be manually adjustable independently of the other eye’s lens. Id. Dr. Savidis’ testimony (and our finding) is further supported by Gordon, which discloses that the focus of each lens can be independently adjusted by turning a screw. Ex. 1007, Figs. I–IV, 1:67–80, 1:87–100, 2:5– 22; see also Ex. 1011, 75:9–13 (Plummer agrees that Gordon’s screws are independently adjustable.). Dr. Savidis’ testimony (and our finding) is also supported by Cronin, which discloses left and right calibration screws for allowing independent adjustment of the focal length of the left and right lenses, respectively. Ex. 1006, 4:27–32, 5:16–22, 5:66–6:2, Figs. 2 and 4. We also rely on Cronin’s disclosure of the purpose and advantage of the independent adjustment feature: According to Cronin, it allows the focal lengths of the left and right lens assemblies to be matched or related to each other in a pre-determined manner to compensate for unusual visual disorders, thereby avoiding visual discomfort by focusing each of the user’s eyes at sensibly the same object distance. Id. at 5:9–16. The preponderance of the evidence establishes that one way suggested by the prior art to provide independent adjustability of each eye’s lens would have been to replace the non-adjustable connector (leaf hinge 23) of Kurtin ’532 with an adjustable connector, such as the nut, screw, and tab arrangement of Kurtin ’629. See PO Resp. 15 (describing Petitioner’s first proposed modification); Tr. 14:16–20 (Petitioner is relying on modifications 1 and 3.). Our finding is supported by Dr. Savidis’ testimony that, in order to have independent adjustability of each lens unit, a person of ordinary skill in the art would have been motivated to seek a suitable adjuster structure to replace the non-adjustable connector of Kurtin ’532. Ex. 1003 ¶ 77. Our finding is also supported by Dr. Savidis’ testimony that a person of ordinary skill in the art “would have exercised no more than routine skill in the art to implement this substitution by utilizing existing seal 21 of Kurtin ’532 shown in Figure 3 and by attaching tabs to or creating tabs for Kurtin’s ’532 front and rear rings to accommodate Kurtin’s ’629 screw and nut.” Id. ¶ 81. Our finding is further supported by Kurtin ’532 Figure 5, which shows leaf hinge 23 connecting the front and rear rings, and Kurtin ’532 Figure 3, which shows elastomeric bellows 21 allowing the rear ring to move with respect to the front ring. Ex. 1004 ¶¶ 32, 33, Figs. 3, 5. Our finding is further supported by Kurtin ’629, which discloses adjustable spectacles including nut 20, screw 21, and actuating tabs 19, where nut 20 can be turned by the wearer to adjust the optical power of the lenses. Ex. 1009, Abstract, Figs. 1–3, 3:50–4:9.” slip op. at 15

  Patent outcomesUS 8,708,487 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,708,487
• Adlens USA, Inc. / Adlens, Ltd. v. Superfocus Holdings LLC, Superfocus, LLC, Insolvency Services Group, Inc., And Dr. Stephen KurtinAll claims unpatentable
  PTAB · Dec 27, 2016 · IPR2015-01821 · APJ Elizabeth M Roesel · IPR · Final written decision

  Claims 1–12 and 14–17 are unpatentable as obvious over Kurtin ’532 and Kurtin ’629 in view of Gordon and/or Cronin; anticipation by Cronin was not shown for claims 3–12 and 14–17.

  RulingsFinal written decision

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

    “their broadest reasonable interpretation in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under that standard, we generally give claim terms their ordinary and customary meaning, as understood by a person of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). “Absent claim language carrying a narrow meaning, the PTO should only limit the claim based on the specification . . . when [it] expressly disclaim[s] the broader definition.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). “Although an inventor is indeed free to define the specific terms used to describe his or her invention, this must be done with reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We construe claim terms only to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8

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

    “Our reviewing court instructs that “merely because an element does not include the word ‘means’ does not automatically prevent that element from being construed as a means-plus-function element.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc) (quoting Cole v. Kimberly-Clark Corp., 102 F.3d 524, 531 (Fed.Cir.1996)). “Generic terms such as ‘mechanism,’ ‘element,’ ‘device,’ and other nonce words that reflect nothing more than verbal constructs may be used in a claim in a manner that is tantamount to using the word ‘means’ because they ‘typically do not connote sufficiently definite structure’ and therefore may invoke § 112, para. 6.” Id. at 1350. We agree with Patent Owner that the terms, “adjustable element” (claim 3) and “controllable spacing member” (claim 15), should be construed as means-plus-function terms. The words “element” and “member” are the same as or similar to the words the Federal Circuit indicated are “tantamount to using the word ‘means.’” Williamson, 792 F.3d at 1350. Dr. Savidis agrees that the terms, “adjustable element” and “controllable spacing member,” do not define a particular structure. Ex. 2003, 76:4–21, 77:1–7, 80:8–17. Accordingly, we construe these terms in accordance with 35 U.S.C. § 112 ¶ 6. Construing a means-plus-function claim term is a two-step process. We first identify the claimed function, and then we determine what structure disclosed in the specification corresponds to the claimed function. Williamson, 792 F.3d at 1351; In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc).” slip op. at 9

  • Skill levelSkill level board ownDecided for patent owner

    “B. Person of Ordinary Skill in the Art We determine that a person of ordinary skill in the art would have an undergraduate degree in mechanical engineering or equivalent education and one to two years of experience with optics. Our determination is supported by the testimony of Dr. Plummer (Ex. 2002 ¶ 49), as well as the testimony of Dr. Savidis (Ex. 2003, 66:24–67:7, 67:16–20, 69:14–20). We also rely on Petitioner’s asserted references as establishing the level of skill in the art at the relevant time. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “Dr. Plummer testifies that “assembly of Gordon’s spectacles would have to be performed by a skilled technician.” Ex. 2002 ¶ 165 (emphasis added). That testimony does not persuasively support Patent Owner’s argument, PO Resp. 45, that Gordon’s adjustment can only be performed by a skilled technician. To the extent that Dr. Plummer’s testimony could be read to support Patent Owner’s argument, we give greater weight to Dr. Savidis’ testimony, which is consistent with Gordon’s disclosure of an adjustment that can be performed “quickly and readily.” Ex. 1013, 1:14, 1:18.” slip op. at 21

  Patent outcomesUS 8,967,797 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,967,797
• Momenta Pharmaceuticals, Inc. v. Bristol-Myers Squibb CompanyNo claims unpatentable
  PTAB · Dec 22, 2016 · IPR2015-01537 · APJ Deborah Katz · IPR · Final written decision

  Claims 1–15 were not shown unpatentable as obvious over Cohen, Shire, and Carpenter because Petitioner did not establish a reasonable expectation of success.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedOther

    “suggests a trial-and-error approach to protein formulation. See Ex. 2011 (“Very often, proteins have to be evaluated individually and stabilized on a trial-and-error basis.”). Thus, we credit Dr. Staples’s testimony regarding the use of trial-and-error optimization because it appears that this was a known approach for formulating proteins. We do not agree that because the approach was known, it was necessarily expected to be successful. Petitioner cites to the statement in Carpenter that the authors were “quite confident” the generalized high throughput formulation procedure they describe “can be coupled successfully with high throughput screening strategies of protein drugs and facilitate drug development within the inherent time and resource constraints of the pharmaceutical industry.” Ex. 1004, 195. We note that, although in isolation Carpenter’s proclamation of being “quite confident” appears to demonstrate a reasonable expectation of success, when considered in context it refers to a general trend in the industry, not to the ability to formulate specific proteins. The full statement does not indicate that there was confidence that any particular drug could be successfully formulated as a liquid. Thus, this evidence is not persuasive.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation foundNot shown unpatentable

    “parties, we determine, on balance, that Petitioner has not established sufficiently that an ordinary artisan would have had a reasonable expectation of success in formulating CTLA4Ig as a stable liquid formulation as recited in the challenged claims. Specifically, in the challenge to Patent Owner’s claims, Petitioner relies on Carpenter to show that an ordinarily skilled artisan would have known how to prepare a stable liquid formulation of CTLA4Ig for subcutaneous administration. Pet. 33–40. The statements in Carpenter are the most significant evidence of whether there would have been an expectation of success in achieving the claimed formulation. But Carpenter expressly states that “[i]t [could] be assumed that most proteins will not exhibit sufficient stability in aqueous solution to allow a liquid formulation to be developed.” Ex. 1004, 188; PO Resp. 16. Carpenter also states that although a stable liquid formulation is desirable, “for most proteins maintaining physical and chemical stabilities in aqueous solution for an extended period of time is extremely difficult.” Ex. 1004, 184. These statements indicate that there would not have been a reasonable expectation of success in achieving the claimed formulations. Dr. Staples’s testimony about routine trial-and-error optimization does not overcome these statements. Petitioner’s citation to Paborji (Ex. 1016) does not persuade us otherwise. Even though Paborji states that CTLA4Ig in phosphate buffer is “relatively stable,” without testimony to explain how this would be interpreted by a skilled artisan, the strong doubt about success expressed in Carpenter is not overcome.” slip op. at 13

  Patent outcomesUS 8,476,239 not shown unpatentable
  § 103 obviousnesscites KSR
  Patents in suitUS 8,476,239
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Ixi IP, LLCAll claims unpatentable
  PTAB · Dec 21, 2016 · IPR2015-01444 · APJ John A Hudalla · IPR · Final written decision

  Claims 1, 4–7, 12, 14, 15, 22, 23, 25, 28, 34, 39, 40, 42, and 46 are unpatentable under the stated § 103 combinations.

  RulingsFinal written decision

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

    “The parties’ arguments require us to consider whether a printer is commensurate with the broadest reasonable interpretation of “thin terminal.” See Pet. 30–31; PO Resp. 42–43; Pet. Reply 18–20. The ’033 patent describes “thin terminals” as having “a relatively low power central processor and operating system” and as being “mainly used as peripherals to an Application server in a PAN.” Ex. 1001, 5:2–5. The main tasks of a thin terminal are described as “user interaction, rendering output for a user and providing an Application server with a user’s input.” Id. at 5:5–7. Examples of thin terminals provided in the ’033 patent include a watch and a messaging terminal. Id. at 5:5–7. Furthermore, the ’033 patent contrasts thin terminals with smart terminals having “a relatively powerful central processor, operating system and applications,” such as “a computer notebook and PDA.” Id. at 4:62–5:2. In describing a messaging terminal in one embodiment, the ’033 patent states that the terminal “has no embedded application code or data.” Id. at 10:18–21. Petitioner contends a printer is a thin terminal because, at least, a printer “has a low power central processor and operating system relative to a laptop computer or PDA.” Pet. 31 (citing Ex. 1003 ¶ 25) (internal quotation omitted). We agree with Petitioner, and we additionally observe that a printer is a peripheral utilized for rendering user output, which is consistent with the Specification’s description of a thin terminal. We also agree with Petitioner that the Specification’s reference to “no embedded application code or data” (Ex. 1001, 10:18–21) does not preclude a printer with application code and/or data from being a thin terminal, because the ’033 patent also describes the thin terminal locating, downloading, and executing software. Pet. 19 (citing Ex. 1001, 10:13–25). As such, we determine the “thin terminal” recited in claims 7 and 46 encompasses a printer.1” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends a person of ordinary skill in the art would have had a Master[] of Science Degree (or a similar technical Master’s Degree, or higher degree) in an academic area emphasizing electrical engineering, computer engineering, or computer science with a concentration in communication and networking systems or, alternatively, a Bachelor’s Degree (or higher degree) in an academic area emphasizing electrical or computer engineering and having two or more years of experience in communication and networking systems. Pet. 7–8. Petitioner’s contention is supported by the testimony of Dr. Kiaei, who bases his testimony on his “experience working in industry and academia, with undergraduate and postgraduate students, with colleagues from academia, and with engineers practicing in industry.” Ex. 1003 ¶¶ 15– 16. IXI does not dispute Petitioner’s definition of the level of ordinary skill in the art, and, in fact, IXI applies it in IXI’s Patent Owner Response. PO Resp. 8; see also Ex. 2301 ¶ 16 (IXI’s declarant, Dr. Mandayam, applying same definition). Accordingly, we apply Petitioner’s definition of the level of ordinary skill in the art for purposes of this Decision. We further observe that Petitioner’s proposed definition comports with the qualifications a person would need to understand and implement the teachings of the ’033 patent and the prior art of record.” slip op. at 9

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “3. Marchand Marchand is a published international patent application, and Petitioner asserts Marchand’s priority date under 35 U.S.C. § 102(e) is April 3, 2000, the date of filing for a prior national application (i.e., Marchand Priority) in the United States. See Pet. 4–5. IXI does not contest Petitioner’s priority date assertion. Therefore, for purposes of this decision, we find Marchand qualifies as prior art to the ’033 patent under 35 U.S.C. § 102(e) because April 3, 2000, predates the May 7, 2001, filing date of the ’033 patent.” slip op. at 10

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

    “ordinarily skilled artisan “would have modified Marchand’s system such that the public IP address of the mobile phone gateway 33 was provided by the cellular network 35.” PO Resp. 40 (quoting Pet. 17–18). IXI argues that Marchand and Vilander do not indicate a need for the cellular network to provide a public IP address for the gateway mobile phone. Id. (citing Ex. 2301 ¶ 70). Nevertheless, we agree with Petitioner that “using Vilander’s address allocation in Marchand would have amounted to nothing more than the use of a known technique to improve similar devices in the same way or the combination of prior art elements according to known methods to yield predictable results.” Pet. Reply 15 (citing, inter alia, KSR v. Teleflex, 550 U.S. 398, 417 (2007)); see also Pet. 19 (citing same). Although Marchand describes gateway mobile phone as having “a public IP address recognized in the wireless IP network,” Marchand does not explicitly describe how the public IP address is assigned. Pet. Reply 16 (quoting Ex. 1005, 4:23–30). In light of this, Petitioner identifies evidence that Vilander’s GGSN would have improved Marchand by allocating the public IP address to Marchand’s gateway mobile phone 33. Pet. 18 (citing Ex. 1003 ¶ 46; Ex. 1011, 1:48–52, 1:57–59).” slip op. at 22

  Patent outcomesUS 7,039,033 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,039,033
• Samsung Electronics Co. Ltd. / Samsung Electronics America, Inc. et al. v. Ixi IP, LLCAll claims unpatentable
  PTAB · Dec 21, 2016 · IPR2015-01446 · APJ John A Hudalla · IPR · Final written decision

  Claims 1, 2, 6, 7, 9, 10, 12–16, 21–24, 26–28, and 30 are unpatentable under § 103(a) over Marchand and Sears, or Marchand, Sears, and Lee.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “According to Petitioner, a person of ordinary skill in the art relevant to the ’648 patent would have had a Master of Science Degree in electrical engineering, computer engineering, or computer science or a bachelor’s degree in electrical engineering, computer engineering, or computer science and two or more years of experience in communication and networking systems. Pet. 7. Petitioner’s contention is supported by the testimony of Dr. Kiaei, who bases his testimony on his “experience working in industry and academia, with undergraduate and postgraduate students, with colleagues from academia, and with engineers practicing in industry.” Ex. 1014 ¶¶ 15– 16. IXI does not dispute Petitioner’s definition of the level of ordinary skill in the art, and, in fact, IXI applies it in IXI’s Patent Owner Response. PO Resp. 8; see also Ex. 2501 ¶ 16 (IXI’s declarant, Dr. Mandayam, applying same definition). Accordingly, we apply Petitioner’s definition of the level of ordinary skill in the art for purposes of this Decision. We further observe that Petitioner’s proposed definition comports with the qualifications a person would need to understand and implement the teachings of the ’648 patent and the prior art of record.” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Petitioner also cites Sears’s description that device information can be “provided by a device or user during a request for . . . application download.” Pet. 36 (quoting Ex. 1015 ¶ 41) (emphasis added). Petitioner additionally cites Sears’s description of software that is downloaded “based on a user profile sent at the time of search.” Pet. Reply 7 (quoting Ex. 1015 ¶ 42). Contrary to IXI’s arguments, these citations establish that Sears is not limited to providing device information in one transaction and then downloading software in a separate transaction. Rather, we are persuaded by Petitioner’s analysis that an ordinarily skilled artisan would have understood Sears as also teaching contemporaneous downloading and sending of device information. See Ex. 1014 ¶¶ 62–63. Thus, Petitioner establishes that the combination of Marchand and Sears teaches every limitation of claim 1.” slip op. at 15

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

    “IXI also characterizes Petitioner’s alleged motivation to combine Marchand and Sears as being a “hindsight-fueled, juxtaposition of discrete elements of the references.” PO Resp. 27. IXI argues that Petitioner’s alleged motivation “is based entirely on maintaining the benefits (or not ‘negating the benefits of’[)] of each individual system after making the alleged combination.” PO Resp. 26 (citing Pet. 15–16). We do not find Petitioner’s alleged motivation to be flawed, however. Supported by the testimony of Dr. Kiaei, Petitioner provides an extensive analysis that turns on an ordinarily skilled artisan being motivated to add “Sears’ techniques for optimized downloading of applications” to Marchand. See Pet. 15 (citing Ex. 1014 ¶¶ 31–34). Petitioner’s mention of “retain[ing] the benefits” of Marchand simply underscores that Sears’s server and optimized application downloading functionality augment and provide further benefits to Marchand’s piconet and its use of a gateway mobile phone to connect to a cellular IP network. Id. at 17–18 (citing Ex. 1014 ¶ 37). Petitioner’s combination also is rooted in the common teachings mentioned above. Thus, Petitioner establishes that an ordinarily skilled artisan would have recognized that Sears’s technique would also improve similar devices in the same way; as such, using Sears’s technique in this way “is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. The relatively high level of skill ascribed to an ordinary artisan—namely, a Master of Science degree in engineering (see supra § II.A.2.)—suggests that applying Sears’s techniques to Marchand would have been well within the skill of an ordinarily skilled artisan. For these reasons, Petitioner has established that a person of ordinary skill in the art would have had reason to combine the teachings of Marchand and Sears to achieve the method recited in claim 1.” slip op. at 17

  • Obviousness (§103) › Objective indicia / secondary considerationsOther

    “c. Secondary Considerations of Nonobviousness IXI did not put forth any evidence of secondary considerations of nonobviousness.” slip op. at 18

  Patent outcomesUS 7,016,648 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,016,648
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Ixi IP, LLCAll claims unpatentable
  PTAB · Dec 21, 2016 · IPR2015-01445 · APJ Kristina M Kalan · IPR · Final written decision

  Claims 1–3, 5–7, 9, 13–17, 19, 21–23, 27, 28, and 30 are unpatentable as obvious over Liu alone and Liu with Chiloyan; anticipation by Liu was not shown.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “systems. Pet. 7. In its Response, Patent Owner states it applies Petitioner’s definition of a person of ordinary skill on in the art. PO Resp. 9. Based on our review of the ’648 patent, the types of problems and solutions described in the ’648 patent and cited prior art, we adopt, for purposes of this Decision, Petitioner’s definition of a person of ordinary skill in the art at the time of the claimed invention. We note that the applied prior art also reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 6

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

    “Petitioner submits that “all terms of the ’648 Patent should be given their broadest reasonable plain meaning.” Pet. 4. Patent Owner submits that “the terms of the challenged claims should be interpreted according to their plain and ordinary meaning.” PO Resp. 9. Just as in the Decision on Institution, we apply the broadest reasonable interpretation standard here. In our Decision on Institution, we stated that “we do not explicitly construe any claim terms.” Dec. 5. We similarly see no reason to construe explicitly any claim term at this stage in this proceeding. B. Anticipation Analysis” slip op. at 6

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

    “identifier includes manufacturer information, as required by the independent claims. Patent Owner correctly notes that there is no explicit disclosure in Liu of manufacturer information present in the device information. PO Resp. 21–22. Petitioner has not directed us to a disclosure in Liu that expressly states that manufacturer information is present in the device information. We are unpersuaded by Dr. Kiaei’s testimony, which is couched in terms of what Dr. Kiaei opines “must be” in Liu, rather than what Liu expressly discloses. Ex. 1003 ¶ 39. Dr. Kiaei’s testimony discusses portions of Liu regarding manufacturer 1670 and its registration of device identifiers for toys, but these citations to Liu do not expressly disclose the disputed claim limitation. Id. ¶¶ 37–39. Dr. Kiaei provides no additional authority for the statements supporting the assertions in paragraphs 37–39, in particular, the statement that “each identifier must be associated in some way to the particular manufacturer of the toy to allow ‘each toy to be used within the system [to] be uniquely recognized.’” Pet. 15 (citing Ex. 1003 ¶ 39); see also 37 C.F.R. § 42.65(a) (stating opinion testimony that does not disclose underlying facts or data “is entitled to little or no weight”). We also find unpersuasive the argument that “each identifier must be associated in some way to the particular manufacturer of the toy to allow ‘each toy to be used with the system [to] be uniquely recognized.’” Ex. 1003 ¶ 39. Liu states that, via registration of a device identification number for the toy, “each toy to be used in the system may be uniquely recognized.” Ex. 1005, 46:5–7. If, as hypothesized by Dr. Kiaei, two manufacturers registered the same toy identifier for two different toys, then by its terms, the toy would not be uniquely recognized, as required by Liu. Id. Petitioner also has not carried its burden to establish that Liu inherently discloses that the device information includes a manufacturer of the device. “To establish inherency, the extrinsic evidence ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference.’” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). Inherency is not “established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Id. (quotation omitted).” slip op. at 11

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

    “We agree with Petitioner that there remains ambiguity about the field of endeavor Patent Owner seeks to identify with respect to the ’648 patent. Reply 20. “The field of endeavor of a patent is not limited to the specific point of novelty, the narrowest possible conception of the field, or the particular focus within a given field.” Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1001 (Fed. Cir. 2016). Petitioner characterizes the field of endeavor of both disclosures as “techniques for network communication between devices and servers,” which, while broad, is not unreasonable. Reply 22. Although Liu’s most noticeable feature may be a teddy bear, the underlying networking and functionality of its system place it in the same field of endeavor as the ’648 patent. See id. at 20–21 (including citations to Liu’s disclosures of aspects of network interactions between toy devices and servers). Limiting Liu’s field of endeavor to “toys” is insupportably narrowing when Liu in fact discloses networking features that in numerous instances align with the disclosure of the ’648 patent. Regarding the particular problem to be solved, our position remains the same as in the Decision on Institution. Liu’s disclosure is, at least, reasonably pertinent to the problem faced by the inventors of the ’648 patent, i.e., “the problem of ‘sending software to a device connected to a local network from a remote server.’” Dec. 14. Thus, we remain persuaded that Petitioner has established sufficiently that Liu is analogous art.” slip op. at 17

  Patent outcomesUS 7,016,648 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,016,648
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Ixi IP, LLCAll claims unpatentable
  PTAB · Dec 21, 2016 · IPR2015-01443 · APJ Kristina M Kalan · IPR · Final written decision

  Claims 1, 4, 5, 7–9, 12, 14–16, and 23–24 are unpatentable under § 103 over the instituted combinations of Marchand, Router Plugins, and the applicable additional references.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “For the purpose of this Decision, we accept Petitioner’s undisputed contention that a person of ordinary skill in the art as of the critical date would have had a Master’s of Science Degree in an academic area emphasizing electrical engineering, computer engineering, or computer science (or a similar technical Master’s Degree, or higher degree) with a concentration in communication and networking systems or, alternatively, a Bachelor Degree (or higher degree) in an academic area emphasizing electrical engineering, computer engineering, or computer science and having two or more years of experience in communication and networking systems. Ex. 1003 at 15. Additional education in a relevant field, such as computer science, computer engineering, or electrical engineering, or industry experience may compensate for a deficit in one of the other aspects of the requirements stated above. Pet. 9–10. Patent Owner applied Petitioner’s definition in its Patent Owner Response. PO Resp. 10–11. The level of ordinary skill in the art is further” slip op. at 8

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

    “the broadest reasonable construction in light of the specification of the patent in which they appear. See Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard); 37 C.F.R. § 42.100(b). Under that standard, and absent any special definitions, we give claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms must be set forth with reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Only those terms which are in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). In our Decision on Institution, we determined that the claim 1 phrase “software component . . . loaded . . . from the one or more devices connected to said one or more cellular networks” needed no express construction. Dec. 7–8. Patent Owner, in its Response, agrees that “a person of ordinary skill in the art would have understood this recitation without an explicit construction.” PO Resp. 11. We see no reason to modify our position in light of the record developed at trial. No other claim terms have been presented to us for construction, and we determine that no other claim terms require express construction. B. Principles of Law” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “We are persuaded by Petitioner’s arguments in this regard. We understand Petitioner as premising the combinability of Marchand and Router Plugins on the routing of IP packets. Pet. 14 (Marchand’s “mobile gateway 33 performs routing for IP packets”), 23 (“Marchand discloses a mobile phone gateway 33 that routes IP packets between a local area network and an external cellular network . . . .”); Reply 3. Petitioner relies on Router Plugins’ “plugin-based routing software” to be “implemented in Marchand’s mobile phone gateway 33 to implement various types of router functionality, such as routing of IP packets and IP address translation.” Pet. 24. Indeed, Dr. Mandayam agrees that routing of IP packets is done by Marchand, and is done at a network layer of the protocol stack. Reply 3–4 (citing Ex. 1016, 21:21–22:2, 160:16–19; Ex. 2201 ¶¶ 34, 35). Dr. Mandayam also agrees that Router Plugins performs routing of IP packets, and that routing of IP packets occurs at a network layer of the protocol stack. Id. at 5–6 (citing Ex. 1016, 145:15–24, 21:21–22:2). We further agree with Petitioner’s contention that, even though the Router Plugins routing framework fits within an operating system kernel, “Router Plugins does not describe routing IP packets at the operating system layer,” but rather, performs routing of IP packets at a network layer of the protocol stack. Id. at 4–5 (citing Ex. 1006, 229 col. 2, 231 col. 2, Fig. 1). We credit Dr. Kiaei’s testimony that one of ordinary skill in the art, understanding that both “Marchand and Router Plugins describe devices that utilize software to route IP packets and perform network address translation,” would have been motivated to make Marchand’s IP routing “more ‘flexible and modular’ by using the plugin-based router software of Router Plugins.” Ex. 1003 ¶ 55. The enhanced routing of IP packets at the network layer, as demonstrated by Router Plugins, would have led one of ordinary skill in the art to consider the inclusion of Router Plugins’ technology to better the IP routing of Marchand, which also takes place at the network layer.” slip op. at 14

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We have the discretion to determine the appropriate weight to be accorded to the evidence presented, including opinion testimony, based on the disclosure of the underlying facts or data upon which the opinion is based. See, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to credit one witness’s testimony over another “unless no reasonable trier of fact could have done so”). We are not persuaded by Patent Owner’s arguments that Dr. Kiaei’s testimony as a whole should be given “little weight, if any.” We have considered Patent Owner’s sub-piconet theory, and we determine that it would not have limited an ordinarily skilled artisan’s understanding of Marchand. Thus, we accord an appropriate weight to Dr. Kiaei’s testimony as indicated in this Decision and for the reasons articulated in this Decision. F. Motion to Exclude” slip op. at 34

  Patent outcomesUS 7,295,532 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,295,532
• Hilti, Inc. / Snap-On Incorporated v. Milwaukee Electric Tool CorporationNo claims unpatentable
  PTAB · Nov 14, 2016 · IPR2016-00343 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–11 were not shown unpatentable under § 103 over Takano and Yanai because the proposed combinations and calculations lacked adequate support and relied on hindsight.

  RulingsFinal written decision

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

    “Takano, however, discloses a battery having a plurality of cells connected in series. Ex. 1072 ¶¶ 4, 11, 26. Although we do not question that connecting battery cells in series and/or parallel is known generally in the art, Petitioner does not provide adequate specific reasoning as to why one of ordinary skill in the art would have been led to modify Takano to connect cells in parallel when Takano clearly discloses a series connection. Dr. Abraham’s testimony that the type of connection would be chosen “as needed to provide whatever target voltage and amperage is desired for a particular application,” by itself, does not provide a sufficient reason to modify Takano’s series connection. Petitioner does not explain how the prior art discloses a desired voltage or amperage that would cause one of ordinary skill in the art to modify Takano in the manner proposed. In this case, the only teaching of a desired amperage comes from the ’290 patent itself. Furthermore, Dr. Abraham’s reliance on the disclosure at column 5, lines 57–61, of the ’290 patent as supporting the alleged obviousness of combining two cells in parallel is improper. This passage of the ’290 patent describes alternative configurations of the patentees’ own invention; it is not describing prior art. Relying on knowledge gleaned only from the challenged patent’s disclosure is impermissible hindsight. Cf. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (As long as a judgment on obviousness “takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.”).” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableNot shown unpatentable

    “Furthermore, Petitioner’s obviousness analysis relies on (1) selecting an 18650-size or 26650-size cell; (2) estimating the positive electrode surface area to be 540 cm2; (3) selecting a foil thickness of 15 micrometers; (4) selecting an average discharge voltage of 3.6 volts; and (5) for 18650-size cells, connecting two in parallel. Petitioner fails to point out how the prior art indicates that using all of these particular values in combination would be desirable for a lithium-based battery pack when several other possible values could have been selected. Where “‘the prior art gave either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful,’ courts should reject ‘hindsight claims of obviousness.’” In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1070–71 (Fed. Cir. 2012) (quoting In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009)). Accordingly, we agree with Patent Owner that Petitioner’s obviousness analysis relies on impermissible hindsight.” slip op. at 20

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Third, we agree with Patent Owner that Petitioner’s argument that “three Yanai-based 18650 cells in parallel” would satisfy the 20 Amp Limitation is a new argument. Paper 60, 2. In our view, this argument does more than merely address Patent Owner’s argument regarding Dr. Abraham’s addition error. Rather, by relying on three cells instead of two, Petitioner attempts to provide a new theory as to why the combination of Takano and Yanai renders the challenged claims obvious that was not set forth clearly in the Petition. Because Petitioner waited until the Reply to make this argument, Patent Owner did not have an opportunity to respond to Petitioner’s new argument. We thus decline to consider Petitioner’s new argument as it is an improper reply. Furthermore, Petitioner’s assertion that Patent Owner made no attempt to explain why using three cells would have been just as obvious as using two cells is an improper attempt to shift the burden of proof with respect to obviousness to Patent Owner.” slip op. at 17

  • Expert testimonyPetitioner expert discountedDecided for patent owner

  Patent outcomesUS 7,554,290 not shown unpatentable
  § 103 obviousness
  Patents in suitUS 7,554,290
• Hilti, Inc. / Snap-On Incorporated v. Milwaukee Electric Tool CorporationNo claims unpatentable
  PTAB · Nov 14, 2016 · IPR2016-00344 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–13 were not shown unpatentable over Takano and Yanai under §103 because Petitioner’s evidence did not establish the 20 Amp Limitation without unsupported assumptions and hindsight.

  RulingsFinal written decision

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

    “Takano, however, discloses a battery having a plurality of cells connected in series. Ex. 1072 ¶¶ 4, 11, 26. Although we do not question that connecting battery cells in series and/or parallel is known generally in the art, Petitioner does not provide adequate specific reasoning as to why one of ordinary skill in the art would have been led to modify Takano to connect cells in parallel when Takano clearly discloses a series connection. Dr. Abraham’s testimony that the type of connection would be chosen “as needed to provide whatever target voltage and amperage is desired for a particular application,” by itself, does not provide a sufficient reason to modify Takano’s series connection. Petitioner does not explain how the prior art discloses a desired voltage or amperage that would cause one of ordinary skill in the art to modify Takano in the manner proposed. In this case, the only teaching of a desired amperage comes from the ’173 patent itself. Furthermore, Dr. Abraham’s reliance on the disclosure at column 5, lines 59–63, of the ’173 patent as supporting the alleged obviousness of combining two cells in parallel is improper. This passage of the ’173 patent describes alternative configurations of the patentees’ own invention; it is not describing prior art. Relying on knowledge gleaned only from the challenged patent’s disclosure is impermissible hindsight. Cf. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (As long as a judgment on obviousness “takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.”).” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableNot shown unpatentable

    “18650-size and 26650-size cells is flawed and thus fails to support Petitioner’s assertion that claim 1 would have been obvious over the combination of Takano and Yanai. Furthermore, Petitioner’s obviousness analysis relies on (1) selecting an 18650-size or 26650-size cell; (2) estimating the positive electrode surface area to be 540 cm2; (3) selecting a foil thickness of 15 micrometers; (4) selecting an average discharge voltage of 3.6 volts; and (5) for 18650-size cells, connecting two in parallel. Petitioner fails to point out how the prior art indicates that using all of these particular values in combination would be desirable for a lithium-based battery pack when several other possible values could have been selected. Where “‘the prior art gave either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful,’ courts should reject ‘hindsight claims of obviousness.’” In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1070–71 (Fed. Cir. 2012) (quoting In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009)). Accordingly, we agree with Patent Owner that Petitioner’s obviousness analysis relies on impermissible hindsight.” slip op. at 21

  • Obviousness (§103) › Objective indicia / secondary considerationsNot reached

    “e) Secondary Considerations Patent Owner argues that “[n]umerous secondary considerations strongly favor the patentability of the challenged claims.” PO Resp. 26–59. Because we are not persuaded Petitioner has demonstrated sufficiently that the combination of Takano and Yanai render claim 1 obvious, we need not reach Patent Owner’s assertions regarding secondary considerations.” slip op. at 23

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Third, we agree with Patent Owner that Petitioner’s argument that “three Yanai-based 18650 cells in parallel” would satisfy the 20 Amp Limitation is a new argument. Paper 62, 2. In our view, this argument does more than merely address Patent Owner’s argument regarding Dr. Abraham’s addition error. Rather, by relying on three cells instead of two, Petitioner attempts to provide a new theory as to why the combination of Takano and Yanai renders the challenged claims obvious that was not set forth clearly in the Petition. Because Petitioner waited until the Reply to make this argument, Patent Owner did not have an opportunity to respond to Petitioner’s new argument. We thus decline to consider Petitioner’s new argument as it is an improper reply. Furthermore, Petitioner’s assertion that Patent Owner made no attempt to explain why using three cells would have been just as obvious as using two cells is an improper attempt to shift the burden of proof with respect to obviousness to Patent Owner.” slip op. at 17

  Patent outcomesUS 7,944,173 not shown unpatentable
  § 103 obviousness
  Patents in suitUS 7,944,173
• Hilti, Inc. / Snap-On Incorporated v. Milwaukee Electric Tool CorporationNo claims unpatentable
  PTAB · Nov 14, 2016 · IPR2016-00345 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–19 were not shown unpatentable under § 103 over Takano and Yanai because Petitioner’s evidence did not establish the 20 Amp Limitation without unsupported assumptions and hindsight.

  RulingsFinal written decision

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

    “example 2 is described as having a positive electrode surface area of 6,700 cm2 (id. ¶ 40). This wide variance in the surface areas disclosed by Adachi suggests that the working examples are specific embodiments and not indicative of “common knowledge” in the field. Moreover, we are not persuaded that the range of 400– 680 cm2 is an industry standard surface area for 18650-size cells or that one of ordinary skill in the art necessarily would consider a value in this range to be a typical or likely choice of surface area for any 18650-size cell. Accordingly, the only basis to assert that it would have been obvious to select a positive electrode surface area of 540 cm2 for Yanai’s cell 1-4 would be to rely on the disclosure of Adachi; that is, to assert that it would have been obvious to one of ordinary skill in the art to modify the combination of Takano and Yanai with the teaching of Adachi. Petitioner, however, has repeatedly argued that this is not what it proposes. Reply 3; Tr. 22:22–23:4. Furthermore, we agree with Patent Owner that the Petition does not provide an adequate reason to combine Adachi with Takano and Yanai.” slip op. at 14

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

    “Takano, however, discloses a battery having a plurality of cells connected in series. Ex. 1072 ¶¶ 4, 11, 26. Although we do not question that connecting battery cells in series and/or parallel is known generally in the art, Petitioner does not provide adequate specific reasoning as to why one of ordinary skill in the art would have been led to modify Takano to connect cells in parallel when Takano clearly discloses a series connection. Dr. Abraham’s testimony that the type of connection would be chosen “as needed to provide whatever target voltage and amperage is desired for a particular application,” by itself, does not provide a sufficient reason to modify Takano’s series connection. Petitioner does not explain how the prior art discloses a desired voltage or amperage that would cause one of ordinary skill in the art to modify Takano in the manner proposed. In this case, the only teaching of a desired amperage comes from the ’510 patent itself. Furthermore, Dr. Abraham’s reliance on the disclosure at column 5, lines 61–65, of the ’510 patent as supporting the alleged obviousness of combining two cells in parallel is improper. This passage of the ’510 patent describes alternative configurations of the patentees’ own invention; it is not describing prior art. Relying on knowledge gleaned only from the challenged patent’s disclosure is impermissible hindsight. Cf. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (As long as a judgment on obviousness “takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.”).” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableNot shown unpatentable

    “Furthermore, Petitioner’s obviousness analysis relies on (1) selecting an 18650-size or 26650-size cell; (2) estimating the positive electrode surface area to be 540 cm2; (3) selecting a foil thickness of 15 micrometers; (4) selecting an average discharge voltage of 3.6 volts; and (5) for 18650-size cells, connecting two in parallel. Petitioner fails to point out how the prior art indicates that using all of these particular values in combination would be desirable for a lithium-based battery pack when several other possible values could have been selected. Where “‘the prior art gave either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful,’ courts should reject ‘hindsight claims of obviousness.’” In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1070–71 (Fed. Cir. 2012) (quoting In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009)). Accordingly, we agree with Patent Owner that Petitioner’s obviousness analysis relies on impermissible hindsight.” slip op. at 20

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Third, we agree with Patent Owner that Petitioner’s argument that “three Yanai-based 18650 cells in parallel” would satisfy the 20 Amp Limitation is a new argument. Paper 59, 2. In our view, this argument does more than merely address Patent Owner’s argument regarding Dr. Abraham’s addition error. Rather, by relying on three cells instead of two, Petitioner attempts to provide a new theory as to why the combination of Takano and Yanai renders the challenged claims obvious that was not set forth clearly in the Petition. Because Petitioner waited until the Reply to make this argument, Patent Owner did not have an opportunity to respond to Petitioner’s new argument. We thus decline to consider Petitioner’s new argument as it is an improper reply. Furthermore, Petitioner’s assertion that Patent Owner made no attempt to explain why using three cells would have been just as obvious as using two cells is an improper attempt to shift the burden of proof with respect to obviousness to Patent Owner.” slip op. at 17

  Patent outcomesUS 7,999,510 not shown unpatentable
  § 103 obviousness
  Patents in suitUS 7,999,510

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.