• 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
• 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
• Hilti, Inc. / Snap-On Incorporated v. Milwaukee Electric Tool CorporationNo claims unpatentable
  PTAB · Nov 14, 2016 · IPR2015-01166 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–19 were not shown unpatentable under § 103 over Takano and Yanai because the proposed combination relied on unsupported assumptions and impermissible hindsight.

  RulingsFinal written decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “After institution, Snap-On Incorporated (“Snap-On”) filed a Petition and a Motion for Joinder to this proceeding. IPR2016-00345, Papers 2, 3. We granted the Motion for Joinder, and IPR2016-00345 was joined with IPR2015-01166 and terminated. Paper 24, 6. Consequently, Hilti and Snap-On (collectively, “Petitioner”) are joined in this proceeding.” slip op. at 2

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

    “We construed three claim terms in our Decision to Institute: (1) “hand held power tool,” (2) “battery cells being capable of producing an average discharge current greater than or equal to approximately 20 amps,” and (3) “nominal voltage.” Inst. Dec. 6–12. Neither party has indicated that the interpretations for those phrases were improper, and we do not perceive any reason or evidence that now compels any deviation from our initial determinations. Accordingly, the following interpretations are not in dispute and apply to this Decision:” slip op. at 6

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

    “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 success › HindsightNot shown unpatentableDecided for patent owner

    “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

  Patent outcomesUS 7,999,510 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 7,999,510
• Hilti, Inc. / Snap-On Incorporated v. Milwaukee Electric Tool CorporationNo claims unpatentable
  PTAB · Nov 14, 2016 · IPR2015-01165 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–13 were not shown unpatentable over Takano and Yanai because the obviousness analysis relied on unsupported assumptions and impermissible hindsight.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “We construed three claim terms in our Decision to Institute: (1) “hand held power tool,” (2) “battery cells being capable of producing an average battery pack discharge current greater than or equal to approximately 20 amps,” and (3) “nominal voltage.” Inst. Dec. 5–7. Neither party has indicated that the interpretations for those phrases were improper, and we do not perceive any reason or evidence that now compels any deviation from our initial determinations. Accordingly, the following interpretations are not in dispute and apply to this Decision:” slip op. at 6

  • Skill levelOther

    “15 micrometers has been a common foil thickness.” Ex. 1009 ¶ 228. Patent Owner argues that using a 15-micrometer thickness for the aluminum foil current carrier is not found in either Takano or Yanai, and the selection of this value is hindsight. PO Resp. 24. Petitioner counters that there is no hindsight because Dr. Blomgren acknowledges that foil thickness is a design element “well within the skill level of a person having ordinary skill in the art and could be selected/determined by those skilled in the art without undue experimentation.” Reply 11 (citing Ex. 1119 ¶¶ 21–27, 31–33, 39, 41; Ex. 1118, 72:5–8, 94:25– 95:15, 127:25–129:14, 130:8–19; Ex. 1113 ¶¶ 12, 13, 24–27). Dr. Abraham’s statement regarding 15 micrometers having been a common foil thickness, however, is not supported adequately. Furthermore, Dr. Blomgren’s testimony that Dr. Abraham picked “a known foil thickness, maybe not the most common one, but a known foil thickness” (Ex. 1118, 72:5–8) and “[g]iven cell chemistry, cell geometry, and cell size, all other individual cell design considerations would be well within the skill level of a person of ordinary skill in the art” (id. at 94:25–95:15) does not establish that one of ordinary skill in the art would have a reason to choose a foil thickness of 15 micrometers for Yanai’s cell 1-4. Therefore, we are not persuaded that a sufficient rationale is given for why one of ordinary skill in the art would select this value for Yanai’s cell 1-4.” slip op. at 15

  • 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 ’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 unpatentableDecided for patent owner

    “vii. Conclusion For the reasons discussed above, Dr. Abraham’s analysis of the proposed 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

  Patent outcomesUS 7,944,173 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 7,944,173
• Hilti, Inc. / Snap-On Incorporated v. Milwaukee Electric Tool CorporationNo claims unpatentable
  PTAB · Nov 14, 2016 · IPR2015-01164 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–11 were not shown unpatentable under § 103 over Takano and Yanai because the evidence did not establish the 20 Amp Limitation or a sufficient reason to combine the teachings.

  RulingsFinal written decision

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

    “¶ 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 foundMotivation 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

  • 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 discountedOther

    “Dr. Abraham’s statement regarding 15 micrometers having been a common foil thickness, however, is not supported adequately. Furthermore, Dr. Blomgren’s testimony that Dr. Abraham picked “a known foil thickness, maybe not the most common one, but a known foil thickness” (Ex. 1118, 72:5–8) and “[g]iven cell chemistry, cell geometry, and cell size, all other individual cell design considerations would be well within the skill level of a person of ordinary skill in the art” (id. at 94:25–95:15) does not establish that one of ordinary skill in the art would have a reason to choose a foil thickness of 15 micrometers for Yanai’s cell 1-4. Therefore, we are not persuaded that a sufficient rationale is given for why one of ordinary skill in the art would select this value for Yanai’s cell 1-4.” slip op. at 15

  Patent outcomesUS 7,554,290 not shown unpatentable
  § 103 obviousness
  Patents in suitUS 7,554,290
• Snap-On Inc. v. Milwaukee Electric Tool CorporationNo claims unpatentable
  PTAB · Nov 14, 2016 · IPR2015-01244 · APJ Grace Karaffa Obermann · IPR · Final written decision

  Claims 1–8, 10, and 11 of the ’290 patent, claims 1–8 and 10–13 of the ’173 patent, and claims 1–6 and 8–19 of the ’510 patent were not shown unpatentable under § 103 over Fohr, …

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “B. Level of Ordinary Skill in the Art We hold that the prior art references asserted in the Petition are representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (absence of specific findings on “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’” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). To the extent that a more specific definition is required, we hold that an ordinary artisan would include one holding a Bachelor’s Degree in Electrical Engineering with two or three years of experience in battery design. That definition comports with the very similar definitions advanced by the parties. In that regard, Petitioner asserts that an ordinary artisan would encompass a person holding a Bachelor’s Degree in Electrical Engineering with three years of experience in battery design. Pet. 8; Ex. 1007 ¶ 9. Patent Owner similarly asserts that an ordinary artisan would include a person holding a Bachelor’s Degree in Electrical Engineering with two years of battery design experience. Resp. 8; Ex. 2105 ¶ 24.” slip op. at 9

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

    “given its broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). Under the broadest reasonable construction standard, claim terms are given their ordinary and customary meaning, as would be understood by one 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). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In our Decisions to Institute, we construed the 20 Amp Limitation to require that “the battery cells, when configured together in a battery pack, are capable of producing reasonably close to 20 amps of discharge current or greater over the course of delivering their entire rated capacity.” Dec. 5. Neither party disputes that construction, which we adopt for the purposes of this Final Written Decision. To the extent that any other claim term requires express construction, we discuss the construction in our analysis below. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only claim terms in controversy need be construed, and then only to the extent necessary to resolve the controversy). The following facts are supported by a preponderance of the evidence.” slip op. at 9

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Not reached

    “D. Fohr as Prior Art As an initial matter, the parties dispute whether Fohr qualifies as prior art. Resp. 10–15; Reply 2–8; Sur-Reply 1–5. Specifically, Patent Owner seeks to antedate Fohr based on inventor testimony. Resp. 10–15; Sur- Reply 1–5. Petitioner responds that the named inventors are not true inventors with standing to establish facts sufficient to antedate Fohr. Reply 2–8. We decline to reach the antedating issue because it is not necessary to our ultimate conclusion on the question of obviousness. Specifically, even if we accept Petitioner’s view that Fohr qualifies as prior art, we ultimately hold that Petitioner fails to establish by a preponderance of the evidence that any challenged claim would have been obvious over the combined disclosures of Fohr, Sato, and Hallaj. That is so because, as explained below, Petitioner fails to establish that one of ordinary skill in the art would have been led to combine Fohr with Sato and Hallaj in the manner claimed.” slip op. at 10

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

    “We recognize that it may be necessary “to look to interrelated teachings of multiple patents . . . in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed.” KSR Int’l, 550 U.S. at 418. Petitioner in these proceedings, however, directs us to no persuasive reason why an ordinary artisan would have turned to the heat-retaining battery module of Hallaj when working to implement a plurality of Sato’s cells in a pack to replace the capacitors in Fohr. Pet. 36–38 (nowhere addressing that critical point); Reply 13 (devoting four sentences to rebuttal of Patent Owner’s persuasive evidence that one would not have combined the disclosures of Hallaj, Fohr, and Sato in the manner claimed); see Ex. 1033, 15 (Examiner’s observation, in confirming the patentability of the challenged claims during reexamination, that Sato contains “no information as to how Sato’s cells would be implemented in a pack”). We view Petitioner’s unexplained leap from the single battery cell of Sato to the heat-retaining battery module of Hallaj as a classic example of impermissible hindsight reconstruction driven not by any teaching in the prior art, but by the claim requirement of a “plurality” of cells implemented in a battery pack. Pet. 36–38; Reply 13. Patent Owner, by contrast, comes forward with persuasive evidence, which we credit, showing that one of ordinary skill in the art would not have been led to arrange a plurality of Sato’s cells in the heat-retaining battery module of Hallaj because such a modified battery pack would have been unsuitable for use as a replacement for the capacitors in Fohr. Specifically, we credit the testimony of Dr. Blomgren, who cogently explains why a person of ordinary skill in the art would not have been led to the proposed modification. Ex. 2147 ¶¶ 79–85. Dr. Blomgren explains that the proposed modified battery pack “would not have adequate heat dissipation and the Joule heating naturally occurring during operation” of such a pack “would lead to overheating and cell failure” in a power tool application. Resp. 24 (citing Ex. 2147 ¶ 84). That testimony is consistent with the Examiner’s observation, made during reexamination, that “the discharge rates described in Sato are abnormally high” for a power tool cell and “would lead to overheating of the cells.” Ex. 1033, 14. That testimony also is consistent with information provided by Petitioner’s own witness, Dr. Riley, who acknowledged on cross-examination that the battery pack of Fohr, as modified by Sato and Hallaj, would provide “the heat back to the system after a discharge” and, accordingly, would have no “practical applicability” in a power tool application. Resp. 24 (quoting Ex. 2169, 127:13–18, 131:12–24); see Ex. 2169, 127:9–128:2 (Petitioner’s own witness, Dr. Riley, further explaining that Hallaj is concerned with finding “a way of managing heat generation” in a power supply so that “heat can be used, pulled back into the batteries”). We credit Dr. Blomgren’s testimony that the “storing of heat” in Hallaj would have been “antithetical to” Sato’s lithium-based chemistry cells for use as the energy store in Fohr’s hand held power tool. Ex. 2147 ¶ 83. Petitioner’s own witness, Dr. Riley, provides testimony consistent with that view. Resp. 24 (citing Ex. 2169, 12713–18, 131:12–24) (Dr. Riley’s testimony on cross-examination); see Ex. 2147 ¶¶ 81–85 (Dr. Blomgren’s declaration testimony). That view is reinforced by evidence that the discharge rates supported by Hallaj are orders of magnitude lower than what would have been expected for a battery cell meeting the 20 Amp Limitation. Resp. 25; Pet. 38; Ex. 1015, 5:41-44; Ex. 2147 ¶¶ 79–80; see Ex. 1015, 5:41–44 (Hallaj, describing temperature profiles for discharge rates). We are persuaded that the heat-retaining battery module of Hallaj was not designed to handle, in a power tool application, the discharge currents disclosed for Sato’s individual lithium-based battery cell—much less the discharge currents that would be supplied by a plurality of Sato’s cells. Resp. 25 (citing Ex. 2147 ¶¶ 81, 84); see also Ex. 2147 ¶¶ 62–85 (testimony explaining why one of ordinary skill in the art would not have applied a plurality of Sato’s cells in the battery pack configuration of Hallaj to power Fohr’s hand held power tool). We further find that one of ordinary skill in the art would not have been led to replace the capacitors in Fohr’s power tool with Hallaj’s battery module, modified to include a plurality of Sato’s lithium-based cells. Ex. 2147 ¶¶ 62–85. That combination would have presented a serious risk of overheating and, in light of that risk, an ordinary artisan would not have expected the modified battery pack of Hallaj to successfully power Fohr’s hand held power tool. Id.” slip op. at 17

  Patent outcomesUS 7,999,510 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  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.