• Everstar Merchandise Co., Ltd. v. Willis Electric Co., Ltd.Some claims unpatentable
  PTAB · Dec 18, 2025 · PGR2019-00056 · APJ Stacey G White · PGR · Remand

  Claims 2–7, 9–19, 21–25, 27, 30, 31, and 33 are unpatentable as obvious; Petitioner did not prove claims 8, 20, 26, 28, 29, and 32 unpatentable.

  RulingsRemand decision

  • RemandMixed

    “The Federal Circuit found that “[t]he factual record and Willis’s concession on appeal conclusively establish that the cost of copper was a known problem in the art, Debladis ’120 (and Kumada) helped address that issue, and Willis has not disputed that combining the teachings of Kumada and Debladis ’120 was within the skill of an ordinary artisan,” concluding “[n]othing more is required to establish a motivation to combine.” Everstar II, 2025 WL 1501940, 4. The Federal Circuit observed that “Willis has conceded that the combination of Kumada and Debladis ’120 disclose all the limitations in claim 1,” and accordingly, “reverse[d] the Board’s patentability determination as to that claim and vacate[d] the Board’s judgment as to the remaining claims of the ’037 patent,” remanding to us for further proceedings. Id. at 4–5. With those instructions in mind, we review the Petitioner’s allegations regarding claims 2–33.” slip op. at 6

  • Skill levelSkill level board ownDecided for patent owner

    “F. Person of Ordinary Skill in the Art In the First Final Written Decision, we determined that a person of ordinary skill in the art “would have (1) at least two years of experience in the design of decorative lighting, or (2) at least a bachelor’s degree in mechanical engineering, electrical engineering, or an equivalent field, and a basic familiarity with circuits used in decorative lighting.” Paper 40, 12. We see no reason to depart from that earlier determination.” slip op. at 12

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

    “The parties agree that we do not need to construe any claim terms. Pet. 8–9; PO Resp. 16–17. We likewise agree. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 13

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

    “Patent Owner did not dispute that the combined teachings of Kumada and Debladis ’120 disclose each limitation of claim 1. Patent Owner, however, did dispute Petitioner’s proposed reasons for combining Kumada and Debladis ’120, and argues that Debladis ’120 is not analogous art. PO Resp. 36–61. The Federal Circuit stated that substantial evidence only supports the conclusion that a POSA would have been motivated to combine the teachings of Kumada and Debladis ’120. The factual record and Willis’s concession on appeal conclusively establish that the cost of copper was a known problem in the art, Debladis ’120 (and Kumada) helped address that issue, and Willis has not disputed that combining the teachings of Kumada and Debladis ’120 was within the skill of an ordinary artisan. Nothing more is required to establish a motivation to combine. Given that Willis has conceded that the combination of Kumada and Debladis ’120 disclose all the limitations in claim 1, we reverse the Board’s patentability determination as to that claim and vacate the Board’s judgment as to the remaining claims of the ’037 patent. Everstar II, 2025 WL 1501940, 4 (internal citations omitted). The Federal Circuit further noted Patent Owner’s secondary considerations arguments as to claim 1 and stated [t]he cited evidence consists only of a temporal connection between the introduction of Willis’s invention and the UL 588 standards, and deposition testimony of a single witness who seemingly disclaimed any connection between the two. This is not sufficient to rescue a claim as to secondary considerations. Id. at 4, n. 5 (internal citations omitted). Accordingly, the Federal Circuit ruled that claim 1 would have been obvious over Kumada and Debladis ’120. 6. Analysis of Independent Claim 33” slip op. at 17

  Patent outcomesUS 10,222,037 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,222,037
• Medtronic, Inc. And Medtronic Vascular, Inc. v. Teleflex Life Sciences LimitedSome claims unpatentable
  PTAB · Feb 23, 2022 · IPR2020-01343 · APJ James A Tartal · IPR · Final written decision

  Claims 52 and 53 are unpatentable as anticipated by Ressemann; the other challenged claims were not shown unpatentable because Itou is not prior art.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Documents are authenticated by evidence “sufficient to support a finding that the item is what the proponent claims it is.” Fed. R. Evid. 901(a); see Fox Factory v. SRAM, LLC, IPR2016-01876, Paper 59 at 63 (PTAB Apr. 2, 2018) (quoting same). “Authenticity is, therefore, not an especially high hurdle for a party to overcome.” Fox Factory, Paper 59 at 63 (citing United States v. Patterson, 277 F.3d 709, 713 (4th Cir. 2002)). We determine that Exhibit 2024 has been authenticated under the low bar required under Federal Rule of Evidence 901 based on the evidence provided by Petitioner. See Mot. Opp. 2–11. In addition, Petitioner’s arguments go to the weight of the evidence and not its admissibility. Accordingly, we deny Petitioner’s Motion to Exclude. We note, however, that even if we were to exclude Exhibit 2024, it would not change the outcome or our general analysis of this case.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art at the time of the invention would have been either: (1) a medical doctor who would have had “(a) a medical degree; (b) completed a coronary intervention cardiologist;” or (2) an engineer who would have had “(a) an undergraduate degree in engineering, such as mechanical or biomedical engineering; and (b) at least three years of experience designing medical devices, including catheters or catheter-deployable devices.” Pet. 13–14. Additionally, Petitioner contends “[e]xtensive experience and technical training might substitute for education, and advanced degrees might substitute for experience.” Id. at 14. Further, according to Petitioner, a person of ordinary skill in the art “with a medical degree” and a person of ordinary skill in the art “with an engineering degree” may have had access to each other. Id. (citing Ex. 1005 ¶ 31; Ex. 1042 ¶¶ 18–19). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill. PO Resp. 5. We adopt Petitioner’s proposed level of ordinary skill in the art as it is undisputed and consistent with the level of skill reflected in the prior art and the specification of the ’116 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “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)).” slip op. at 17

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached

    “Petitioner proposes the following constructions: (1) “substantially rigid” as “rigid enough to allow the device to be advanced within the guide catheter,” (2) “side opening” needs no construction and should be given its plain and ordinary meaning, (3) “lumen” as “the cavity of a tube,” and (4) “flexural modulus” as “[a] measure of resistance . . . to bending.” 7 Patent Owner argues that Dr. Hillstead does not meet the definition of a person of ordinary skill in the art because he lacks a four-year undergraduate degree in engineering. PO Resp. 5 n.1 (citing, e.g., Ex. 2137, 462:8–13). As noted above, however, it is undisputed that “[e]xtensive experience and technical training might substitute for education.” Pet. 14. Patent Owner does not address Dr. Hillstead’s significant professional experience, which we find sufficient to show he is qualified to opine on the issues in this proceeding from the perspective of a person of ordinary skill in the art. See Ex. 1043 (curriculum vitae of Dr. Hillstead). does not dispute at this stage of the proceeding Petitioner’s proposed construction of these terms. See generally PO Resp. In view of the issues we address below, we determine it is not necessary to address the express interpretation of any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 19

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Ressemann. Pet. 23–31. Petitioner provides a detailed explanation of how it contends Ressemann discloses each of the limitations of claims 52 and 53. Id. In particular, Petitioner explains how Ressemann’s disclosures of the use of features including guide catheter 160, evacuation sheath assembly 100, intermediate shaft portion 120, distal shaft portion 130, lumen 140, and stent delivery system 194 correspond to the recited methods of claims 52 and 53. Id. Petitioner’s contentions are supported by Dr. Brecker and Dr. Hillstead. Ex. 1005 ¶¶ 164–174; Ex. 1042 ¶¶ 36–39, 58–62. Patent Owner does not dispute that claims 52 and 53 are anticipated by Ressemann. See generally PO Resp; PO Sur-reply; see also Pet. Reply 2 (Petitioner arguing that Patent Owner did not dispute that Ressemann anticipates claims 52 and 53). After reviewing the record, we find Petitioner shows by a preponderance of the evidence that Ressemann discloses each limitations (Pet. 23–31) as our own findings. Accordingly, Petitioner shows by a preponderance of the evidence that Ressemann anticipates claims 52 and 53 of the ’116 patent.” slip op. at 26

  Patent outcomesUS RE46,116 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
• Unified Patents, LLC v. Justservice.Net LLCSome claims unpatentable
  PTAB · Feb 16, 2022 · IPR2020-01258 · APJ Christopher G Paulraj · IPR · Final written decision

  Claims 1–6, 8, 10, 13–16, 19, and 20 are unpatentable as obvious; claims 11, 12, 17, and 18 were not shown unpatentable.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityDecided for petitioner

    “We declined to decide whether Dropbox should have been named an RPI in the Petition in the Institution Decision. Inst. Dec. 2–4. Patent Owner did not raise the RPI issue in its post-institution Response. We agree with Petitioner that Patent Owner has thus forfeited any RPI arguments. Reply at 24 (citing Unified Patents, LLC v. Mobility Workx, LLC, IPR2018- 00150, Paper 26 at 3 (PTAB Dec. 2, 2019) (RPI arguments waived if not in Response)). Therefore, we need not address this issue further.” slip op. at 3

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In our Institution Decision, we adopted Patent Owner’s definition as being consistent with the level of skill in the art reflected by the prior art. Dec. 10–11; see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “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 6 Patent Owner also submitted a supplemental declaration by Dr. Brogioli (Ex. 2031) with its Sur-Reply. We expunged that document from the record along with certain other exhibits (Exs. 2023–2030) as untimely presented under 37 C.F.R § 42.23(b). Paper 37. Therefore, we do not take those documents into consideration for our analysis in this Decision. Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). We continue to apply that same definition for our analysis in this Final Written Decision. We note, however, that there does not appear to be a significant difference between the parties’ respective definitions, so our analysis would not substantially differ under Petitioner’s definition.” slip op. at 9

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Additionally, we are not persuaded by Patent Owner’s argument that Walker is not enabled, or that a POSITA would not have a reasonable expectation of success in combining Prust with Walker, because those arguments focus on features not required by the challenged claims of the ’868 patent. See Raytheon Tech. Corp. v. General Electric Co., 993 F.3d 1374) (Fed. Cir. 2021) (“In general, a prior art reference asserted under § 103 does not necessarily have to enable its own disclosure, i.e., be ‘self-enabling,’ to be relevant to the obviousness inquiry.”). Dr. Brogioli acknowledged that he never even analyzed whether the features of Walker that he argues are not enabling are required in the claims of the ’868 patent. Ex. 1032, 84:1-85:22 (testifying that he did not recall performing an analysis about whether the claims of the ’868 patent required allowing users to edit different parts of the same file at the same time, user collaboration, concurrency among user actions and editing, or locking a document). Moreover, other than pointing to the allegedly deficient teachings of Walker itself, Dr. Brogioli cites to no evidence of record in support of his testimony that a POSITA would not have a reasonable expectation of success in implementing Walker. See Ex. 2022 ¶¶ 66–74. But Walker itself is presumed to be enabling for what it teaches. See In re Antor Media Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012) (“[A] prior art printed publication . . . is presumptively enabling barring any showing to the contrary by [the] patentee.”). Rather than the unsupported testimony of Dr. Brogioli, we credit the testimony of Dr. Long, which is corroborated by other prior art, that the concepts disclosed in Walker, such as indicating that downloaded files are currently locked and unavailable to other users and multi-user editing, would have been familiar to programming students before 2005, and a POSITA would have been able to apply these well-known techniques with a reasonable expectation of success. Ex. 1008 ¶¶ 36–40, 67 (citing Ex. 1011–1017); Ex. 1033 ¶¶ 4–5.” slip op. at 39

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

    “we are not persuaded by Patent Owner’s claim construction position that the claims require the virtual server to transmit information about files locally stored on the client device (in addition to virtual server files) as part of the fourth claim element. With regard to the claim language, we agree with Patent Owner that “the one or more files associated with the particular user storage account” recited in the fifth claim element finds antecedent basis in the prior recitation of “information relating to one or more files associated with the particular user storage account” in the fourth claim element. By its plain language, what this means is that at least some of the “information” that is transmitted from the virtual server under the fourth element must be related to the “userselected file” that is subsequently uploaded from the client device under the fifth element. Cf. Yamaha Corp. v. ESS Tech., Inc., 82 F.3d 435, 1996 WL 146499, *3 (Fed. Cir. 1996) (“By using a definite article ‘the’ to describe ‘output’ in the last phrase, Yamaha raises the inference that the term refers to the same value as in the first step.”). Thus, contrary to Petitioner’s arguments, we are not of the view that files referenced in the fourth and fifth elements are completely “distinct.” But this does not necessarily imply, as Patent Owner suggests, that the virtual server must already be in possession of information relating to locally stored files at the point of the transmitting step of the fourth element and prior to the uploading step of the fifth element. Indeed, there is nothing recited in the claims to suggest how the virtual server would come to know about files stored on the client device.” slip op. at 16

  Patent outcomesUS 10,476,868 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 10,476,868
• Fitbit, Inc. / Wahoo Fitness LLC. v. Blackbird Tech, LLC D/B/A Blackbird Technologies, LLCSome claims unpatentable
  PTAB · Mar 12, 2019 · IPR2018-00275 · APJ Debra K Stephens · IPR · Final written decision

  Claims 2 and 5 were not shown unpatentable over Amano; claim 6 was shown unpatentable as obvious over Kato and Amano.

  RulingsFinal written decision

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

    “Under district court-type claim construction, claim terms are given their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art, at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of 8 record (Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc); see also In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012) (“While claims are generally given their broadest possible scope during prosecution, the Board’s review of the claims of an expired patent is similar to that of a district court’s review.”) (internal citation omitted)). “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence” (DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17)). There is a “heavy presumption,” however, “that a claim term carries its ordinary and customary meaning” (CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted)). We determine that no claim terms require express construction (see Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (Only terms which are in controversy need to be construed, and only to the extent necessary to resolve the controversy)).” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art at the time of the invention would have been [1] a person with a bachelor’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with at least two years of experience in motion tracking, motion analysis, inertial sensing, or signal analysis, or [2] a person with a master’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with a specialization in motion tracking, motion analysis, inertial sensing, or signal analysis or “[a] person with less education but more relevant practical experience. . . .” (Pet. 26–27 (citing Ex. 1005 ¶ 45–47)). Patent Owner does not dispute the educational level or experiential aspects of Petitioner’s definition in its Response (see generally PO Resp.). We note that the assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding (see Okajima at 1355). Based on our review of 12 the ’212 Patent, the types of problems and solutions described in the ’212 Patent and cited prior art, and the testimony of Dr. Choudhury and Dr. Michael Caloyannides, we adopt and apply Petitioner’s description of a skilled artisan as possessing (1) a bachelor’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with at least two years of experience in motion tracking, motion analysis, inertial sensing, or signal analysis, or (2) a master’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with a specialization in motion tracking, motion analysis, inertial sensing, or signal analysis, is supported by the current record.” slip op. at 12

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

    “Petitioner does not identify any disclosure in Amano that describes calculating pitch based on any distance. That pitch has a length/time measurement does not change the lack of disclosure of Amano of any counting of steps in determining the distance traveled. Indeed, Amano’s FFT processing merely determines when a step has occurred through identification of peak frequency of the second order harmonic wave component, to determine pitch; however, the FFT processing does not count steps to be used in further calculation.” slip op. at 20

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

    “We agree with Patent Owner that Amano does not disclose calculation of distance travelled, as recited in claims 2 and 5, as set forth above. Further, Petitioner has not persuaded us an ordinarily skilled artisan would have found it obvious to modify the FFT processing which identifies a peak frequency of a second harmonic to measure the pitch, to calculate a distance travelled as recited in claims 2 and 5 instead. Petitioner provides no additional discussion of this limitation in its Petition, instead relying on its anticipation arguments (Pet. 50–51). Thus, Petitioner has not articulated any reason why an ordinarily skilled artisan would have understood Amano to teach calculating a distance travelled.” slip op. at 25

  Patent outcomesUS 6,434,212 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,434,212
• Fitbit, Inc. / Wahoo Fitness LLC. v. Blackbird Tech, LLC D/B/A Blackbird Technologies, LLCSome claims unpatentable
  PTAB · Mar 11, 2019 · IPR2017-02012 · APJ Debra K Stephens · IPR · Final written decision

  Claims 2 and 5 were not shown unpatentable over Amano; claim 6 was shown unpatentable as obvious over Kato and Amano.

  RulingsFinal written decision

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

    “Under district court-type claim construction, claim terms are given their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art, at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of 8 record (Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc); see also In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012) (“While claims are generally given their broadest possible scope during prosecution, the Board’s review of the claims of an expired patent is similar to that of a district court’s review.”) (internal citation omitted)). “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence” (DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17)). There is a “heavy presumption,” however, “that a claim term carries its ordinary and customary meaning” (CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted)). We determine that no claim terms require express construction (see Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (Only terms which are in controversy need to be construed, and only to the extent necessary to resolve the controversy)).” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art at the time of the invention would have been [1] a person with a bachelor’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with at least two years of experience in motion tracking, motion analysis, inertial sensing, or signal analysis, or [2] a person with a master’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with a specialization in motion tracking, motion analysis, inertial sensing, or signal analysis or “[a] person with less education but more relevant practical experience. . . .” (Pet. 26–27 (citing Ex. 1005 ¶ 45–47)). Patent Owner does not dispute the educational level or experiential aspects of Petitioner’s definition in its Response (see generally PO Resp.). We note that the assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding (see Okajima at 1355). Based on our review of 12 the ’212 Patent, the types of problems and solutions described in the ’212 Patent and cited prior art, and the testimony of Dr. Choudhury and Dr. Michael Caloyannides, we adopt and apply Petitioner’s description of a skilled artisan as possessing (1) a bachelor’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with at least two years of experience in motion tracking, motion analysis, inertial sensing, or signal analysis, or (2) a master’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with a specialization in motion tracking, motion analysis, inertial sensing, or signal analysis, is supported by the current record.” slip op. at 12

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

    “Petitioner does not identify any disclosure in Amano that describes calculating pitch based on any distance. That pitch has a length/time measurement does not change the lack of disclosure of Amano of any counting of steps in determining the distance traveled. Indeed, Amano’s FFT processing merely determines when a step has occurred through identification of peak frequency of the second order harmonic wave component, to determine pitch; however, the FFT processing does not count steps to be used in further calculation.” slip op. at 20

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

    “We agree with Patent Owner that Amano does not disclose calculation of distance travelled, as recited in claims 2 and 5, as set forth above. Further, Petitioner has not persuaded us an ordinarily skilled artisan would have found it obvious to modify the FFT processing which identifies a peak frequency of a second harmonic to measure the pitch, to calculate a distance travelled as recited in claims 2 and 5 instead. Petitioner provides no additional discussion of this limitation in its Petition, instead relying on its anticipation arguments (Pet. 50–51). Thus, Petitioner has not articulated any reason why an ordinarily skilled artisan would have understood Amano to teach calculating a distance travelled.” slip op. at 25

  Patent outcomesUS 6,434,212 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,434,212
• Tomtom, Inc. v. Blackbird Tech, LLC D/B/A Blackbird Technologies, LLCSome claims unpatentable
  PTAB · Mar 11, 2019 · IPR2017-02023 · APJ Debra K Stephens · IPR · Final written decision

  Claims 1–5 are unpatentable over Jimenez, Levi, and ordinary-skill knowledge; claims 6–8 were not shown unpatentable because Jimenez did not teach the claimed transmitter.

  RulingsFinal written decision

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

    “We find the ’212 Patent is directed to data for a particular user (see, e.g., ’212 Patent, Abstract). This conclusion is supported by the Specification. Indeed, all discussion in the ’212 patent is directed to a pedometer for use by and relying on data obtained from an individual user. Thus, the Specification suggests that the term “calibration” should be construed as a process that correlates a user’s stride rate and stride length. The Oral hearing confirms this conclusion. In the Oral Hearing, Petitioner’s counsel, Mr. Doshi, responded to a request to identify the calibration and the plurality of calibrations as follows: JUDGE STEPHENS: So what are you pointing at in the 212 patent as being [a] calibration and the plurality of calibrations? MR. DOSHI: That’s in column 5. So at column 5 it says that after a proper warm up the user completes a sample run or walk on the track at normal pace, et cetera, et cetera. So it's saying that here’s S1 and following completion of the first run, so here it’s saying you’re doing different walks at different speeds . . .where you're having the user walk at different walking speeds and measuring their step size as you do that (Trans. 21:1–10; see also Tr. 19:4–7) JUDGE ZADO: Okay. And then so taking that further then, I understand your argument to be that in the 212 patent the runner for the first sample S1 will run at one pace and that’s, according to Petitioner, that's one calibration and then the runner will run at a second pace for the S2 sample and that’s the second calibration, and then the runner will run at a third pace and then that's the S3 sample and then that's a third calibration? Is that Petitioner's argument? MR. DOSHI: Yes 13 (Tr. 22:4–11). Therefore, based on Petitioner’s statements at the Oral Hearing, the term “calibration” should be construed as the process of taking a sample that correlates step rate and step length for an individual.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not dispute the educational level or experiential aspects of Petitioner’s definition in its Response (see generally PO Resp.), 18 despite Patent Owner’s declarant, Dr. Caloyannides, opining that the level of ordinary skill would not be so limited as proposed by Mr. Blackadar: I note that although the qualifications Mr. Blackadar describes would qualify one as a PHOSITA in this case, I do not believe the definition of a PHOSITA here would be so limited. The technology of the ‘212 Patent implicates other fields, such as Sports Medicine, Exercise Science, and Physiology. I believe that a bachelor’s degree in one of these fields, or a similar field, with at least two years of practical experience working with pedometers and/or health or fitness trackers or sensors, or an advanced degree in one of these areas, could qualify one as a PHOSITA in this case (Ex. 2001 ¶ 26). Petitioner argues that Patent Owner’s definition of a person of ordinary skill in the art would mean a “[person having ordinary skill in the art] under Patent Owner’s definition would be more well-informed than Patent Owner’s own expert” (Pet. Reply. 2); however, we do not read Patent Owner’s assertion or Dr. Caloyannides’ testimony as suggested by Petitioner. Rather, we read Dr. Caloyannides’ testimony as expanding the fields of expertise. We do not observe a meaningful difference between the parties’ assessments of a person of ordinary skill in the art. We further note that either assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding (see Okajima, 261 F.3d at 1355). Our analysis in this Decision is supported by either assessment. Based on our review of the ’212 Patent, the types of problems and solutions described in the ’212 Patent and cited prior art, and the testimony of Mr. Blackadar and Dr. Caloyannides, we adopt and” slip op. at 18

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

    “Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved (In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). Here, Petitioner has persuaded us that Levi is from the same field of endeavor as the ’212 Patent –– pedometers that count the number of steps taken to calculate distance traveled (see Pet. 20). Specifically, although Levi adds a navigation feature, Levi is directed to a pedometer that, in pertinent part, adjusts step size according to step frequency in order to estimate distance traveled by a user (Levi, 6:6–43). Levi states “[t]he present invention for a ground speed/distance sensor is an improvement over a common hiker’s pedometer” and “[t]he present invention analyzes the frequency of a user’s footsteps to aid in the detection of future footsteps, and further to aid in determining the size of footsteps taken by the user” (Levi, Abstract, 2:57–60, 2:65–67). Similarly, the ’212 Patent is directed to a pedometer and specifically, a pedometer that calculates actual stride lengths of a user based on relative stride rates (’212 Patent, Abstract). Thus, both the ’212 Patent and Levi are from the same field of endeavor –– pedometers or devices that include or rely on pedometers. Furthermore, both Levi and the ’212 Patent are pertinent to the particular problem with which the inventor is involved –– accurate distance identification. 44 Patent Owner additionally argues “[t]he different problems addressed” slip op. at 44

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

    “A holding of obviousness can be based on a showing that “there was an apparent reason to combine the known elements in the fashion claimed” (KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). Such a showing requires some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. . . . [H]owever, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ. (id. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)) (internal quotation marks omitted)). As admitted by Patent Owner, an ordinarily skilled artisan would have known a user’s stride length could vary with stride rate at the time of invention (see PO Resp. 52). As noted by Petitioner, Levi discloses using a dynamic step size algorithm that “improve[s] the accuracy of distance 49 measurements of a human footstep sensor” (Pet. Reply 25 (citing Levi, 6:17–21)). We further credit Mr. Blackadar’s testimony that an ordinarily skilled artisan would have been motivated to improve Jimenez using Levi’s dynamic step size algorithm, to improve the calculated distances (Ex. 1005 ¶¶ 92). Indeed, we find that an ordinarily skilled artisan would have been motivated to combine the teachings of Jimenez and Levi to “monitor [ ] the distance traveled more accurately than prior pedometers that calculated distance based on average stride length” (Pet. 31 (citing Ex. 1005 ¶ 90), 32 (citing Ex. 1005 ¶ 92)). In particular, we find that, given it was known a user’s stride length could vary with stride rate, as admitted by Patent Owner (PO Resp. 52), an ordinarily skilled artisan would have been motivated to implement a data processor that accounted for this relationship, such as that described in Levi (Pet. 32–33 (citing Ex. 1005 ¶¶ 93–94)).” slip op. at 49

  Patent outcomesUS 6,434,212 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,434,212
• Instradent USA, Inc. v. Nobel Biocare Services AGSome claims unpatentable
  PTAB · Feb 15, 2017 · IPR2015-01786 · APJ Christopher G Paulraj · IPR · Final written decision

  Claims 1–5 and 19 are unpatentable as anticipated by the ABT Catalog; claims 1–5, 19, and 20 were not shown unpatentable as obvious over the Anthogyr Catalog and Update Journal.

  RulingsFinal written decision

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

    “We also do not find that the plain and ordinary meaning of “having” in this claim limitation would be understood to define the coronal region as only the portion with a frustoconical shape. Contrary to Patent Owner’s arguments, the term “having” is generally considered a transitional phrase even when it is not used to separate the preamble from the body of the claim, and it may be treated as open or closed depending on its context in the claim and specification. See, e.g., Lampi Corp., 228 F.3d at 1376 (interpreting the phrase “housing having two half-shells” in the body of the claim as open-ended, thus allowing for additional components in the housing); see also Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001) (noting that “the term ‘having’ does not convey the open-ended meaning as strongly as ‘comprising,’” and “does not create a presumption that the body of the claim is open”); Manual of Patent Examining Procedure § 2111.03 (“Transitional phrases such as ‘having’ must be interpreted in light of the specification to determine whether open or closed language is intended.”). Notwithstanding, the claim drafter specifically chose not to use the conventional phrase for limiting the openness of a claim—“consisting of”; nor did the drafter use the desired shape as an adjective to the structure, e.g., “a frustoconical coronal region.” In the context of this claim, there is nothing that physically or logically prevents the coronal region from “having” a portion that is frustoconical in shape and a portion that is not. We next consider whether this broader interpretation is consistent with the rest of the specification.” slip op. at 10

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

    “2. Remaining Claim Terms We determine that no explicit construction of any other claim term is necessary for our resolution of the issues in this case. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 14

  • Strike new argumentNew argument consideredDecided for petitioner

    “We determine that Petitioner’s Reply does not present improper new arguments and evidence concerning whether the ABT Catalog qualifies as a prior art printed publication. Throughout this proceeding, Petitioner has maintained the position that the ABT Catalog was publicly accessible prior to the May 2003 critical date, and thus anticipates challenged claims 1–5 and 19 under 35 U.S.C. § 102(b). Although Petitioner identified certain evidence in its Petition (e.g., the testimony of Dr. Fromovich) that we recognized had some inconsistencies, Petitioner was not precluded from presenting further corroborating evidence consistent with its overall theory that the ABT catalog was publicly accessible before the critical date. Because Patent Owner contested the sufficiency of the evidence submitted with the Petition in its Patent Owner Response, Petitioner was properly allowed to respond to those arguments in its Reply. See 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the corresponding opposition, patent owner preliminary response, or patent owner response.”). Moreover, as recognized by the Federal Circuit, “the introduction of new evidence in the course of the trial is to be expected in inter partes review trial proceedings and, as long as the opposing party is given notice of the evidence and an opportunity to respond to it, the introduction of such evidence is perfectly permissible under the APA.” Genzyme Therapeutic Products Ltd. P'ship v. Biomarin Pharm. Inc., 825 F.3d 1360, 1366 (Fed. Cir. 2016); cf. In re NuVasive, Inc., 841 F.3d 966, 973 (Fed. Cir. 2016) (finding APA violation where “the Board refused to permit [patent owner] to file a surreply or even to address the matter during oral argument”). Here, Patent Owner was provided an opportunity to substantively respond to Petitioner’s new Reply evidence in its Sur-Reply. Paper 57, 7. Patent Owner took advantage of that opportunity. Paper 77. Patent Owner also filed a Motion for Observations of the cross-examination testimony of Petitioner’s Reply Declarants. Paper 76. Patent Owner also extensively addressed this evidence during oral argument. See, e.g., Tr. 75:14–83:6. Accordingly, we determine that the evidence submitted with Petitioner’s Reply to support its assertions regarding public accessibility of the ABT Catalog is not improper and may be considered.” slip op. at 17

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

    “When the totality of the evidence is assessed, 13 we find that the ABT Catalog was made available, without restriction, to members of the interested public at least during the March 2003 IDS Conference. This is similar to the circumstances considered in Klopfenstein and MIT, where the court found that materials distributed or presented during an industry conference constituted a printed publication. Klopfenstein, 380 F.3d at 1348–52; MIT, 774 F.2d at 1109. Here, although there is no evidence that an actual presentation was made, the evidence tends to show that any interested conference attendee could have obtained a copy of the ABT Catalog from the ABT booth during the March 2003 IDS Conference. Moreover, while only one individual (Mr. Chakir) was shown to have actually obtained a copy of the ABT Catalog, we note that “actual retrieval of a publication is not a requirement for public accessibility.” SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1197 (Fed. Cir. 2008); see also Constant v. Advanced Micro–Devices, Inc., 848 F.2d 1560, 1569 (Fed. Cir. 1988) (“Accessibility goes to the issue of whether interested members of the relevant public could obtain the information if they wanted to. If” slip op. at 25

  Patent outcomesUS 8,714,977 mixed
  Claim construction§ 102 anticipation
  Patents in suitUS 8,714,977
• Spectrum Brands, Inc. / Unikey Technologies, Inc. v. Assa Abloy ABSome claims unpatentable
  PTAB · Jan 12, 2017 · IPR2016-00686 · APJ Christopher G Paulraj · IPR · Final written decision

  Claims 1, 3, 5, 9–16, 22, 23, 26, 29, and 30 are unpatentable over Nielsen; claims 7 and 21 were not shown unpatentable over Nielsen and Karkas for lack of a sufficient reason to combine.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “Id. ¶ 84. Dr. Villasenor, however, does not cite to any underlying technical documents that may have corroborated Mr. Lovelock’s explanation about how the Seos platform operates; nor has Dr. Villasenor mapped Mr. Lovelock’s explanation to specific claim elements. Also, Mr. Lovelock himself has not submitted a declaration in this proceeding. We, thus, give Dr. Villasenor’s opinion that Patent Owner’s Seos platform practices the claims little weight. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Further, we recognize that Dr. Villasenor’s testimony is the only evidence of record on this issue, as Petitioners have not submitted a rebuttal declaration attesting that Patent Owner’s products do not practice the claims.” slip op. at 37

  • ExcludeMotion to exclude, deniedMixed

    “between the commercial success of the Seos product and the claims of the ’374 patent.” Mot. to Exclude 8. Patent Owner argues that “the quoted passage is not relevant because it is removed by 10 years from the commercial success events Dr. Villasenor addressed,” and “bears no relationship to, and does not serve to prove, disprove or rebut the nexus between the commercial success of the Seos product in the hospitality or enterprise industries and the claimed credential updating features embodied in the Seos system.” Id. at 9. We disagree. As discussed above, we find that the quoted passage of the Annual Report statement is evidence of Patent Owner’s pre-existing market share, and, thus, relevant to the issue of whether the alleged commercial success has a nexus to the claimed invention. We have taken into account the fact that the 2004 Annual Report is from over 10 years ago, and do not find that it will cause any confusion. To the contrary, the 2004 Annual Report is more probative to the issue of pre-existing market share than more recent reports insofar as the ’374 patent claims an effective filing date based on a provisional application filed in April 2005. Ex. 1001, Title Page. Accordingly, we determine that Exhibit 1008 is admissible evidence under Rules 402 and 403, and we deny Patent Owner’s Motion to Exclude as to that exhibit. IV.” slip op. at 44

  • Skill levelSkill level board ownOther

    “We agree with Dr. Villasenor insofar as the relevant field for the ’374 patent is more accurately defined as “electronic control access systems” rather than merely “security systems” (id. ¶ 41), but otherwise find no meaningful difference between the level of ordinary skill in the art proposed by the parties’ experts. We also recognize that the level of skill in the art is reflected in the prior art references themselves, which focus on mobile-phone based electronic access systems, and take that into consideration in our analysis. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). As such, we determine that a person of ordinary skill in the art would have least an undergraduate degree in computer science or electrical engineering and one year of experience in electronic control access systems.” slip op. at 15

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

    “We determine, for purpose of this Final Written Decision, that no terms in the challenged claims require express construction. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

  Patent outcomesUS 8,150,374 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,150,374
• Spectrum Brands, Inc. / Unikey Technologies, Inc. v. Assa Abloy ABSome claims unpatentable
  PTAB · Jan 12, 2017 · IPR2015-01562 · APJ Christopher G Paulraj · IPR · Final written decision

  Claims 1, 3, 5, 9–16, 22, 23, 26, 29, and 30 are unpatentable as obvious over Nielsen; claims 7 and 21 were not shown unpatentable over Nielsen and Karkas.

  RulingsFinal written decision

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

    “separate Petition for inter partes review, challenging claims 1, 3, 5, 7, 9–16, 21–23, 26, 29, and 30 of the ’374 patent based on similar grounds to those presented by Spectrum. See IPR2016-00686, Paper 2. We instituted inter partes review based on UniKey’s Petition to the extent that the grounds set forth therein are consistent with the basis for our institution of this proceeding, and joined UniKey as a Petitioner to this proceeding. See Paper 29 (instituting inter partes review based on UniKey’s Petition and joining UniKey as a Petitioner to IPR2015-01562). As a condition of UniKey’s joinder, the parties submitted a joint stipulation setting forth the parameters of UniKey’s participation in this proceeding, including the requirement that “UniKey will not have any right to separate or additional briefing, discovery, or speaking time for the duration of the contest involving [the ’374 patent], through termination of the joined proceedings and through any related appeal.” Paper 27, 1. UniKey also filed a statement “withdraw[ing] all grounds and arguments presented in IPR2016-00686 to the extent that they differ from the Panel’s ground for institution in IPR2015-01562.” Paper 32.2” slip op. at 2

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

    “the Specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2146 (2016). Under the broadest reasonable construction standard, claim terms are presumed to have 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). “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 determine, for purpose of this Final Written Decision, that no terms in the challenged claims require express construction. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree with Dr. Villasenor insofar as the relevant field for the ’374 patent is more accurately defined as “electronic control access systems” rather than merely “security systems” (id. ¶ 41), but otherwise find no meaningful difference between the level of ordinary skill in the art proposed by the parties’ experts. We also recognize that the level of skill in the art is reflected in the prior art references themselves, which focus on mobile-phone based electronic access systems, and take that into consideration in our analysis. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). As such, we determine that a person of ordinary skill in the art would have least an undergraduate degree in computer science or electrical engineering and one year of experience in electronic control access systems.” slip op. at 15

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “step 1a. As recognized by Petitioners, the Federal Circuit has observed that “[u]nless the steps of a method actually recite an order, the steps are not ordinarily construed to require one.” Reply 10–11 (quoting Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003)). In this case, however, the plain language of claim 1 requires “storing . . . a first set of credential data,” “receiving . . . a credential update,” and “in response to receiving the credential update, . . . replacing the first set of credential data with a second set of credential data that is different from the first set of credential data.” Ex. 1001, 12:35–45. Thus, we agree that “[l]ogic compels the conclusion that step 1b follows step 1a, because the controller’s receipt of a ‘credential update’ associated with ‘different’ data would follow the first set of credential data previously stored at the controller.” PO Resp. 21. See Mformation Techs., Inc. v. Research In Motion Ltd., 764 F.3d 1392, 1398–99 (Fed. Cir. 2014) (“[A] claim requires an ordering of steps when the claim language, as a matter of logic or grammar, requires that the steps be performed in the order written, or the specification directly or implicitly requires an order of steps.” (internal quotation marks omitted)). With reference to Figure 3, Nielsen teaches that “[i]n the initial step 381, the access right owner 352 defines the access rights to be granted, possibly including a list of possible access right grantees,” that “[i]n step 382, the access right owner 352 authorizes the administrator 351 to generate and assign access keys,” that “[b]y means of an access code management system, the administrator in step 383 transforms the access right definition into a set of electronic access codes,” and that “[i]n step 384, the access codes and other related data are stored.” Ex. 1002 ¶ 132. Thus, we agree with Patent Owner that “the relied upon steps of Nielsen teach a process that differs from the steps recited in claim 1” insofar as Figure 3 shows the “receiving” step(s) performed before the “storing” step 384. PO Resp. 25. Specifically, that Figure 3 of Nielsen does not show that the process is iterative. Nonetheless, we find that Nielsen suggests a process wherein access codes (i.e., “credential data”) that are stored in the access code management system are periodically replaced with new and different access codes (i.e., a “credential update”). See Ex. 1002 ¶ 128 (“[T]he access code may be transmitted periodically, in order to replace the access codes on a lock control unit and the corresponding electronic key . . . .”). The same paragraph of Nielsen also indicates that “[t]he access code management system 211 generates and administers the access codes as described in connection with FIGS. 3 and 9a-b.” Id. Thus, we determine that the skilled artisan would have found it obvious to initially store access codes, and thereafter repeat the process described in the flow chart of Figure 3 in order to replace previously stored access codes. As explained by Dr. Green, the purpose of Nielsen periodically replacing previous access codes “is to improve the security of the system,” such as in the situation when codes are invalidated if misused or lost. See Ex. 1004 ¶ 29. Nielsen explicitly references Figure 3 when referencing how the access code management system administers access codes (Ex. 1002 ¶ 128), thereby providing a suggestion and motivation to modify Nielsen’s teachings so as to repeat the process of Figure 3 when replacing previously stored access codes in order to improve security.” slip op. at 18

  Patent outcomesUS 8,150,374 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,150,374
• Pharmacosmos A/S v. Luitpold Pharmaceuticals, Inc.Some claims unpatentable
  PTAB · Jan 4, 2017 · IPR2015-01490 · APJ Lora M Green · IPR · Final written decision

  Claims 1–3, 10–15, 23, 25, 27, 30, and 41–43 are unpatentable; claims 17 and 47 were not shown unpatentable; claims 28 and 29 were cancelled.

  RulingsFinal written decision

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

    “based on the complex as a whole, rather than just the carbohydrate component, as Fishbane related to iron dextran complexes. Reply 10. We agree with Petitioner that the language of the term “substantially non-immunogenic carbohydrate component” itself only requires an assessment of the immunogenicity of the carbohydrate component, and disagree with Patent Owner that the claims require an assessment of the immunogenicity of the iron carbohydrate complex as a whole. In that regard, we note that the Specification of the ’702 patent supports our construction that the “substantially non-immunogenic carbohydrate component” is limited to the carbohydrate component as opposed to the iron carbohydrate complex as a whole. Specifically, the Specification teaches in the background section that previously available iron dextran products suffered from a “high incidence of anaphylactoid reactions . . . believed to be caused by the formation of antibodies to the dextran moiety,” while “[o]ther parenteral iron products (e.g., iron sucrose and iron gluconate) do not contain the dextran moiety, and the incidence of anaphylaxis with these products is markedly lower.” Ex. 1001, 1:53–57; see also id. at 11:3‒4 (“non-immunogenic carbohydrate component; no cross reactivity with anti-dextran antibodies”). Moreover, the language of independent claim 1 itself does not require a non-immunogenic complex, but only specifies that the “iron carbohydrate complex has a substantially non-immunogenic carbohydrate component.” Moreover, we decline to limit the term “substantially non- immunogenic carbohydrate complex” to require an incidence level of lower than 0.6%. Rather, what is supported by the claim language and the Specification is a low risk such that the incidence of adverse events of the carbohydrate complex is lower than dextran. See, e.g., Tr. 53‒54 (counsel for Patent Owner acknowledging that Fishbane was not incorporated by reference, and that it was only cited as a “see generally”).” slip op. at 10

  • Skill levelOther

    “We do not find a significant different between the requirements for the ordinary artisan proposed by Petitioner and Patent Owner. We agree with Petitioner (Pet. 14) that the best evidence of the level of skill in the art are the references themselves, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001), and, thus, we need not explicitly adopt either Petitioner’s or Patent Owner’s characterization of the level of skill in the art. Moreover, we note that the result of the analysis regarding the patentability of the claims would be the same under the requirements for the ordinary artisan proposed by either Petitioner or Patent Owner.” slip op. at 12

  • Expert testimonyPetitioner expert creditedDecided for petitioner
  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableInherency foundUnpatentable

    “Petition (Pet. 22–27), we find that Petitioner has demonstrated by a preponderance of the evidence that Geisser teaches all the limitations of claim 1, either inherently or explicitly. That is, we agree with Petitioner that Geisser teaches a method of treating a disease characterized by an iron deficiency, specifically iron deficiency anemia (Pet. 23; Ex. 1003, Abstract, 1:4‒7, 2:4‒7, 9:30‒31). We further agree that Geisser teaches a method of administering an iron carbohydrate complex, that is, iron carboxymaltose, in a single dosage form of at least 0.6 grams of elemental iron, as Geisser teaches administering iron carbohydrate complexes as a single dose of 500‒ 1000 mg of iron. Pet. 23 (citing Ex. 1003, 1:26‒4:1, 8:7-10, 10:14‒17). In that regard, we credit the testimony of Dr. Linhardt that Geiser discloses iron carboxymaltose, and that Geisser describes a general synthetic method that is nearly identical to the method described in the ʼ702 patent. Ex. 1005 ¶¶ 8‒10, 13. In addition, as Geisser teaches one of the iron carbohydrate complexes explicitly recited by claim 1, that is, iron carboxymaltose, it would inherently meet the limitation that the carbohydrate component is substantially non-immunogenic and would have substantially no cross-reactivity with anti-dextran antibodies. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“Products of identical chemical composition can not have mutually exclusive properties.”). The teachings of Geisser support that finding, as Geisser specifically teaches that the complexes have low toxicity and a reduced danger of anaphylactic shock. Pet. 23 (citing Ex. 1003, 1:26‒ 2:1, 8:7‒10); see also Ex. 1001, 12:12‒14 (noting that as “[t]he iron carboxymaltose complex (e.g., VIT-45) generally does not contain dextran and [it] does not react with dextran antibodies.”).” slip op. at 18

  Patent outcomesUS 7,754,702 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,754,702

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.