• Topp & Screed S.A. v. Somero Enterprises, Inc.All claims unpatentable
  PTAB · Dec 16, 2024 · IPR2024-00051 · APJ Sean P O’Hanlon · IPR · Final written decision

  Claims 1–9 are unpatentable as anticipated by Quenzi and obvious over Quenzi; claims 10–15 are unpatentable as obvious over Jochems and Quenzi.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We are persuaded by Petitioner’s showing. Although Jochems discloses that its machine includes “a vibration beam 27 which is driven by vibration motor 28” (Ex. 1004, 4:14–16), Jochems does not provide details regarding the nature of its vibration beam or how it functions. See generally Ex. 1004. Quenzi, on the other hand, explains that its vibrating beam “flatten[s], smooth[s] and consolidate[s] the uncured concrete while being partially supported thereon.” Ex. 1003 ¶ 13; see also id. ¶ 81 (“The floating action of the vibrator beam 20 over the uncured concrete then continues to consolidate, smooth, level and finish the uncured concrete surface.”). Petitioner’s contentions are supported by its witness, Mr. Breidenbach. See Ex. 1006 ¶ 183. Mr. Breidenbach further testifies that the benefits of a floating-type vibration beam, such as disclosed by Quenzi, were well known and desirable at the time the application resulting in the ’366 patent was filed. Id. ¶¶ 184–188.” slip op. at 25

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person having ordinary skill in the art at the time of the invention would have had “an undergraduate education in mechanical, civil, construction, or industrial engineering, or a related field and at least two years of experience in research, design, development, testing, or use of mechanical or industrial equipment.” Pet. 14 (citing Ex. 1006 ¶ 42). Petitioner further contends that “[a]dditional education may substitute for experience and vice-versa.” Id. (citing Ex. 1006 ¶ 42). 3 At this stage of the proceeding, the parties have not directed us to any such objective evidence. Based on the arguments presented and the cited references, we find Petitioner’s definition of the level of ordinary skill reasonable and for purposes of this Decision, adopt it as our own.” slip op. at 9

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

    “We agree with Petitioner’s interpretation of the Second Wherein Recitation. Of particular note, the ’366 patent states that, “[i]n the illustrated embodiment [of Figure 19], screed head assembly 314′ is attached at the front frame portion 312a.” Ex. 1001, 20:45–47 (emphasis added). Figure 19 is reproduced below. Figure 19 illustrates screeding machine 310′ comprising wheeled support 312, including front frame portion 312a, and screed head assembly 314′. Id. at 20:34–37. The screed head assembly is not mounted directly to the front frame portion. Rather, “screed head assembly 314′ is pivotally mounted to front frame portion 312a via an upper arm linkage 334 and a lower arm linkage 332.” Id. at 20:61–63. Thus, based on our review of the record, “attached at” as used in the ’366 patent does not require a direct connection. Instead, the use of intermediate components is within the meaning of “attached at.” It follows that “said vibratable member is adjustably attached at a rearward end of said grade establishing element” as recited in claim 1 does not require the vibratable member to be connected directly to the grade establishing element, but rather allows for the vibratable member to be connected to the grade establishing element via intermediary components. The patent Examiner and Applicant appear to have interpreted the term in the same manner during prosecution. See Ex. 1002, 94 (the Examiner finding that Nomura’s4 tamper 34 “is adjustably attached at a rearward end of” leveling blade 33), 116–18 (the Applicant addressing the Examiner’s rejection but not contesting the Examiner’s interpretation); Ex. 1007, Fig. 2 (illustrating the positioning of Nomura’s tamper 34 and leveling blade 33).” slip op. at 18

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

    “Quenzi repeatedly discloses that its vibration beam floats on and is at least partially supported at the struck-off surface of the uncured concrete. In the summary section, Quenzi discloses that its “vibrating member generally floats upon or is supported directly on the uncured concrete surface created by the grade setting device ahead of it.” Ex. 1003 ¶ 9; see also id. ¶¶ 11 (“the ability of the apparatus to be at least partially supported upon the desired correct elevation surface it creates”), 12 (“[t]he concrete surface working member is at least partially supported on the uncured concrete surface”), 13 (“the concrete surface working member comprises a vibrating member or beam which is vibratable to flatten, smooth and consolidate the uncured concrete while being partially supported thereon”). Regarding the first embodiment discussed in the detailed description, Quenzi discloses that “the vibrator beam 20 floats on or is at least partially supported on the uncured surface” and “vibrator beam 20, along with the screeding device 10, floats on or is at least partially supported on the uncured concrete surface.” Id. ¶¶ 68, 70. Quenzi discloses that the vibrating beams of the asserted embodiments operate in the same manner as the first embodiment. See id. ¶¶ 90, 102, 121. Quenzi also explicitly discloses that the vibrating beams of the asserted embodiments operate in this same manner. See id. ¶¶ 92 (“the vibrating beam 220 rests upon the uncured concrete”), 112 (“vibrating beam 320 is at least partially supported by, or essentially ‘floating’ upon, the uncured concrete surface”), 121 (“vibrating beam 420 [is] substantially similar to . . . vibrating beam 320”); see also id. ¶ 141 (referring to the asserted embodiments when describing another embodiment as “[s]imilar to the embodiments discussed above, screeding device 810 is at least partially supported on an uncured concrete surface and moved along and over the concrete surface to screed and smooth the surface via vibration of the vibrator beam 820 as the vibrator beam 820 floats on or is at least partially supported on the uncured surface” (emphasis added)). And as correctly noted by Petitioner, the ’366 patent relies on Quenzi as an example of how its screed head assembly operates and is attached to the frame portion. See Ex. 1001, 20:45–54. Accordingly, for the foregoing reasons, Quenzi supports Petitioner’s contentions. g. Conclusion For the foregoing reasons, we determine that Petitioner has shown, by a preponderance of the evidence, that claim 1 is anticipated by Quenzi.” slip op. at 21

  Patent outcomesUS 8,038,366 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,038,366
• Cala Health, Inc. v. Emkinetics Inc.All claims unpatentable
  PTAB · Jul 1, 2024 · IPR2023-00511 · APJ Jason W Melvin · IPR · Final written decision

  Claims 1–8 are unpatentable: claims 1–3 and 6 based on Govier anticipation and Govier-Williams obviousness; claims 4, 5, 7, and 8 based on obviousness over Govier-Mumford and Govier-Williams-Mumford.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “We conclude that Petitioner has proven by a preponderance of the evidence that the challenged claims are unpatentable.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner contends that a person of ordinary skill in the art “would have had an undergraduate degree in the field of biomedical engineering, or a related discipline, and at least two years of experience in the design and/or analysis of biomedical devices” and that “[a]dditional work experience could serve as a substitute for a formal degree and vice versa.” Pet. 10 (citing Ex. 1002 ¶ 23). Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the challenged patent and prior art, and we adopt it here.” slip op. at 6

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

    “B. CLAIM CONSTRUCTION Petitioner argues that “no claim terms require express construction to resolve the challenges in this Petition.” Pet. 10. We agree and do not expressly construe any terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only 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 6

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

    “Govier describes a study in which patients with overactive bladders were given “percutaneous electrical stimulations via a 34 gauge needle placed near the tibial nerve 3 finger breadths above the ankle.” Ex. 1005, 1193. Specifically, “[a] 34 gauge, solid stainless steel needle was advanced through the skin” and “the needle was advanced approximately 3 to 4 cm. posterior to the tibia and, if advanced further, would traverse anterior to the fibula.” Id. at 1194. Govier further explains that “[a]n electrocardiogram ground pad was placed over the medial aspect of the calcaneus” and “[a] stimulator was then connected to the needle and the ipsilateral ground pad.” Id. This arrangement is depicted in Govier’s Figure 3, which is reproduced below.” slip op. at 6

  Patent outcomesUS 9,387,338 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 9,387,338
• Cala Health, Inc. v. Emkinetics Inc.All claims unpatentable
  PTAB · Jul 1, 2024 · IPR2023-00508 · APJ Jason W Melvin · IPR · Final written decision

  Claims 1–8 are unpatentable as anticipated by Govier and obvious over Govier and Williams; the Board did not reach the additional grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner contends that a person of ordinary skill in the art “would have had an undergraduate degree in the field of biomedical engineering, or a related engineering discipline, and at least two years of experience in the design and/or analysis of biomedical devices” and that “[a]dditional work experience could serve as a substitute for an engineering degree.” Pet. 9–10 (citing Ex. 1002 ¶ 23). Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the challenged patent and prior art, and we adopt it here.” slip op. at 6

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

    “B. CLAIM CONSTRUCTION Petitioner argues that “no claim terms require express construction to resolve the challenges in this Petition.” Pet. 10. We agree and do not expressly construe any terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only 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 6

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

    “We have reviewed Petitioner’s contentions and evidence and conclude that they prove anticipation of the challenged claims by Govier for the reasons given by Petitioner. Pet. 19–55.” slip op. at 7

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

    “For claim 1, Petitioner asserts that, if Govier does not disclose applying an electrode patch to the outer surface of the skin, skilled artisans would have had reason to substitute Williams’s known electrode patch for Govier’s ground pad as a simple substitution of one known structure for another performing the same function—“creating a current path along the tibial nerve”—and yielding the same results—“ability to stimulate the tibial nerve to treat overactive bladder.” Id. at 21–24. Petitioner contends also that, if Govier does not disclose a controller including a pulse generator, skilled artisans would have had reason “to substitute Williams’s pulse generator for Govier’s stimulator.” Id. at 27–29. Petitioner reasons that skilled artisans would have found it obvious to try Williams’s pulse generator because of its similarities with Govier’s stimulator—“each create current pulses between 1–10 mA.” Id. at 28. Petitioner reasons further that using Williams’s pulse generator would have been a simple substitution. Id.” slip op. at 9

  Patent outcomesUS 9,757,584 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 9,757,584
• Tesla, Inc. v. Charge Fusion Technologies, LLCNo claims unpatentable
  PTAB · May 2, 2024 · IPR2023-00063 · APJ Jeremy M Plenzler · IPR · Final written decision

  Claims 1–5, 7–11, and 14–16 were not proven unpatentable because Hibi does not teach operating climate control based on battery level or determining available climate-control time from that level.

  RulingsFinal written decision

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

    “d) Analysis We agree with Petitioner that Hibi teaches operating its climate control system in an AUTO mode for a duration of time. That time can be up to and beyond the low battery abnormality condition. As explained above, the claim language at least requires instructions that operate the climate control mechanism based on the predetermined battery level in some manner. Patent Owner is correct that Hibi does not care about its battery level for operation of its climate control mechanism. See PO Resp. 42–44. Patent Owner is also correct that “in response to a low battery event, Hibi’s system simply turns on the engine and charges the battery.” Id. at 43 (citing Ex. 1008, Fig. 5). And as Patent Owner further notes, “if a user selects a climate control temperature in system setting mode of Hibi, that temperature is unchanged in response to a low battery event” and “[i]nstead, the temperature remains constant in response to the low battery, as Hibi’s vehicle simply turns the gas engine on and charges the battery.” Id. (citing Ex. 1008 ¶ 43, Fig. 5; Ex. 2004 ¶¶ 91–94; Ex. 2005, 53:13–54:14). Because Hibi does not consider battery level for the operating instructions associated with its climate control system, Petitioner’s challenge to claim 1 fails. In its Reply Petitioner responds to Patent Owner’s contentions by addressing a scenario where limitation 1[h] requires ceasing the selected mode of operation. See Pet. Reply 19–20. As explained above, we do not read limitation 1[h] as requiring ceasing the selected mode of operation. And Petitioner’s explanation in its Reply does not address the issue with its challenge noted above. That is, even in its contentions regarding Hibi ceasing operation, Petitioner still relies on operation where Hibi’s climate control system is operated wholly independent of battery level considerations. See id. at 19 (discussing ceasing operation in Hibi based on a change from climate control with battery on to climate control with engine on). There does not appear to be any dispute that Hibi operates its climate” slip op. at 22

  Patent outcomesUS 10,819,135 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,819,135
• SNF S.A. v. Chevron U.S.A., Inc.No claims unpatentable
  PTAB · Apr 18, 2024 · IPR2022-01534 · APJ Barry L Grossman · IPR · Final written decision

  Claims 1–25 were not shown unpatentable on any asserted ground because the evidence failed to establish the claimed filter ratio or support the proposed combinations.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “In our Decision to Institute this proceeding, we adopted Dr. Barati’s proposed level of skill based on the prior art, the sophistication of the technology disclosed in the ’320 patent, and Dr. Barati’s opinion testimony. Dec. Inst. 17 (“we adopt Dr. Barati’s definition of the level of ordinary skill”). Patent Owner states it “does not dispute the level of skill applied by the Board in its institution decision.” PO Resp. 7. Accordingly, in this Decision, based on the evidence and the arguments of the parties, we maintain and adopt the level of ordinary skill stated in the Decision to Institute. In this proceeding, a person of ordinary skill would have had a Ph.D. in Chemical or Petroleum Engineering (or related science or engineering discipline) with 2-3 years of experience in the design and implementation of methods for hydrocarbon recovery including use of polymer compositions in such recovery methods. Alternatively, a person of ordinary skill might substitute several years of actual design or implementation experience for the advanced degree. See Ex. 1012 ¶ 18.” slip op. at 16

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

    “Claims must be construed “only to the extent necessary to resolve the controversy.” AstraZeneca AB v. Mylan Pharms. Inc., 19 F.4th 1325, 1345 (Fed. Cir. 2021) (quoting Vivid Techs., Inc. v. American Science & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (citations omitted)). We determine that a specific construction of the claims is not necessary to reach a decision in this inter partes review of the challenged claims.” slip op. at 18

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “To serve as an anticipation when the reference is silent about the asserted inherent characteristic, such gap in the reference may be filled with recourse to extrinsic evidence. Such evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. [Citations omitted.] If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the 17 Again, to avoid confusion, this citation format is to page 15 of Exhibit C, which is an attachment to Exhibit 1012 in this proceeding. questioned function, it seems to be well settled that the disclosure should be regarded as sufficient. Id. at 1260 (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)).” slip op. at 23

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

    “Petitioner fails to provide any persuasive evidence or argument that claims 1, 2, 13–15, and 20–25 would have been obvious in view of Li. As discussed above, anticipation and obviousness are different grounds, requiring different analyses, and different evidence. Petitioner fails to establish what modifications in Li would have been obvious and why it would have been obvious to make the modifications with a reasonable expectation of success. The word “obvious” appears in Ground 1 only in the analysis of claim 24, clause D, on page 37 of the Petition, where Petitioner merely states the conclusion that this clause “would be obvious” [sic, the statute requires a temporal component to establish the claim “would have been obvious”]. Accordingly, we determine that Petitioner fails to provide the requisite evidence and arguments that claims 1, 2, 13–15, and 20–25 would have been obvious in view of Li.” slip op. at 28

  Patent outcomesUS 10,626,320 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,626,320
• Tesla, Inc. v. Charge Fusion Technologies, LLCAll claims unpatentable
  PTAB · Apr 16, 2024 · IPR2023-00062 · APJ Jeremy M Plenzler · IPR · Final written decision

  Claims 1–15 are unpatentable as obvious: claims 1–3, 5–8, 10, and 13–15 over Ferro and Lowenthal; claim 9 with Evans; and claims 4, 11, and 12 with Boll.

  RulingsFinal written decision

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

    “Petitioner’s challenges are based on obviousness. A claim is unpatentable under 35 U.S.C. § 103 if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious at the time of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved based on underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) when in the record, objective evidence of non-obviousness. Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966).” slip op. at 5

  • Expert testimonyOther

    “2. Reduction to Practice “The diligence requirement implements the principle that, to antedate a reference,” an inventor “must not only have conceived the invention before the reference date, but must have reasonably continued activity to reduce the invention to practice.” ATI Techs. ULC v. Iancu, 920 F.3d 1362, 1369 (Fed. Cir. 2019). “A patent owner need not prove the inventor continuously exercised reasonable diligence throughout the critical period; it must show 1009 (emphasis by the court). An inventor’s testimony does not alone suffice to prove diligence. Id. at 1007. A “variety of activities” may corroborate an inventor’s testimony about diligence, and any corroborating evidence is considered “as a whole.” Id. at 1007–08.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s declarant, Dr. MacCarley, testifies that one skilled in the art during the relevant timeframe “would have had at least a bachelor’s degree in electrical engineering, mechanical engineering, or physics (or an equivalent field) and at least two years of work experience involving automotive systems, including vehicle information systems, vehicle sensors, and vehicle controllers,” but “[m]ore education can supplement practical experience and vice versa.” Pet. 10 (citing Ex. 1002 ¶ 26). Patent Owner does not contest Petitioner’s articulation of the level of skill in the art. See PO Resp. 14 (“Because [the proposed level of ordinary skill] does not affect the ultimate analysis, Patent Owner takes no position with respect to Petitioner’s proposed level of ordinary skill in the art.”). We analyze the asserted prior art with respect to the level of skill set forth by Petitioner because it is consistent with the prior art.” slip op. at 6

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

    “According to Petitioner, “[n]o terms here require construction and so all claim terms should be given their plain and ordinary meaning.” Pet. 10–11. Similarly, “Patent Owner submits that the Board need not expressly construe any claim term.” PO Resp. 18. We do not need to construe any terms expressly to reach our decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only 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 7

  Patent outcomesUS 9,853,488 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,853,488
• Topp & Screed S.A. v. Somero Enterprises, Inc.Instituted
  PTAB · Apr 10, 2024 · IPR2024-00051 · APJ Sean P O’Hanlon · IPR · Institution

  The Board instituted IPR of claims 1–15 on all petition grounds, finding a reasonable likelihood that Quenzi anticipates claims 1–9 and that Jochems and Quenzi render claims 1–15 obvious.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “Thus, under § 325(d), the Board uses the following two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 9

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

    “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). A decision to institute may not institute on fewer than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018). If the Board institutes a trial, the Board will institute on all challenges raised in the petition. See 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “Petitioner notes that a petitioner in a prior inter partes review proceeding challenging the ’366 patent identified three terms for construction, but argues that no term requires explicit construction here. Pet. 14–17. However, Petitioner interprets recitation [1.7] as “reflect[ing] two requirements,” as discussed further in section III.E.1.e below. Id. at 31. Additionally, in asserting that claim 1 would have been obvious in view of Jochems and Quenzi, Petitioner argues that an ordinarily skilled artisan would understand that, as used in the ’366 patent, “‘striking off concrete’ means ‘screeding uncured concrete.’” Id. at 65 (citing Ex. 1006 ¶ 196). Patent Owner does not proffer any terms for construction. See generally Prelim. Resp. However, as discussed further in section III.E.1.e below, Patent Owner argues that Petitioner’s interpretation of recitation [1.7] is improper. Id. at 6–7. For the reasons provided below, we do not agree with Patent Owner’s contentions.” slip op. at 17

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including: “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Best 7 At this stage of the proceeding, the parties have not directed us to any such objective evidence. Med. Int’l, Inc. v. Elekta Inc., 46 F.4th 1346, 1353 (Fed. Cir. 2022) (quoting Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007)). “The patent’s purpose can also be informative.” Id. Petitioner contends that a person having ordinary skill in the art at the time of the invention (“POSITA”) would have had “an undergraduate education in mechanical, civil, construction, or industrial engineering, or a related field and at least two years of experience in research, design, development, testing, or use of mechanical or industrial equipment.” Pet. 14 (citing Ex. 1006 ¶ 42). Petitioner further contends that “[a]dditional education may substitute for experience and vice-versa.” Id. (citing Ex. 1006 ¶ 42). Patent Owner does not contest Petitioner’s proposed definition or proffer a definition of its own. See generally Prelim. Resp. Based on the arguments presented and the cited references, we find” slip op. at 15

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 8,038,366
• Provisur Technologies, Inc. v. Textor Maschinenbau GmbHInstituted
  PTAB · Mar 20, 2024 · IPR2024-00224 · APJ Carl M Defranco · IPR · Institution

  The Board instituted review of claims 1–4, 6, 9, 10, 14–16, and 22, finding compelling evidence for anticipation and obviousness challenges and a reasonable likelihood for another obviousness challenge.

  RulingsInstitution decision

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

    “III. CONCLUSION For the above reasons, we determine that compelling evidence shows that at least claim 1 is unpatentable as anticipated by Konishi and at least claims 1 and 22 are unpatentable as obvious over Konishi in view of either Linde or McLaughlin. We also determine that a reasonable likelihood exists that claims 1 and 22 are unpatentable as obvious over McLaughlin. And because “[e]qual treatment of claims and grounds for institution purposes has pervasive support in SAS,” we institute on all the claims as challenged in the Petition. See 37 C.F.R. § 42.108(a), (c); PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (citing SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018)). IV. ORDER Accordingly, it is: ORDERED that an inter partes review of claims 1–4, 6, 9, 10, 14–16, and 22 of the ’487 patent is instituted; and” slip op. at 15

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “(1) the district court’s scheduled trial date of November 18, 2024, which falls approximately four-months before the projected deadline for a final decision here (Ex. 2003, 4); (2) the overlap of invalidity issues and the lack of a Sotera stipulation by Provisur (Ex. 2004, 3, 7; Pet. 81); and (3) the district court’s familiarity with the parties and the technology at issue due to the parallel action being the third in a line of cases between the parties dating back four years or so (Ex. 3002, 1). On the other hand, several factors weigh heavily against discretionary denial, such as: (1) the district court’s likelihood of granting a stay given it already did so for another patent, i.e., the ’109 patent, asserted by Provisur in the same action (as noted above in Section I.A) (Ex. 3001, Dkt. #95, #102); (2) the fact that the ’487 patent was only recently added to the parallel action via a counterclaim (Ex. 3002, 2) and the district court recently extended several deadlines such that fact discovery is still ongoing and expert discovery is yet to begin (Ex. 3001, Dkt. #355, #364, #365); and (3) the fact that moving forward here on the ’487 patent may greatly simplify the issues and ease the district court’s burden on what has evidently become an increasingly frustrating and complex case for the district court (see, e.g., Ex. 2001, 18:24–22:15). In the end, we find that the sum of these factors is a wash, effectively cancelling each other out and leaving us with no answer on the question of discretionary denial. Nonetheless, out of an abundance of caution and because Textor believes it is warranted, we will proceed with a “compelling merits” analysis of at least the Konishi-based challenges.” slip op. at 10

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

    “conclusive, evidence that Konishi anticipates all elements of claim 1, including the “relaxing,” “tautening,” and “relative movement” limitations of disputed element 1[C2]. Contrary to Textor’s assertion, Provisur does not “completely ignor[e]” the claimed installation, i.e., “tautening,” limitation. Rather, it is Textor who ignores, and blatantly disregards, Provisur’s clear and overwhelming evidence of Konishi’s disclosure of that particular limitation, not to mention Konishi’s clear and undisputed disclosure of the other undisputed elements of claim 1. Most blatantly, Textor ignores Provisur’s detailed claim chart (as reproduced above), which clearly and concisely maps the recited “relaxing,” “tautening,” and “relative movement” limitations of claim 1 to paragraphs 33–41 of Konishi, as well as to Konishi’s Figures 8 and 9. Pet. 19. Although Textor acknowledges Provisur’s citation to Konishi’s paragraphs 33–35 for teaching the removal, i.e., “relaxing,” limitation of element 1[C2], Textor fails to acknowledge Provisur’s citation to Konishi’s other paragraphs, such as paragraphs 38–41, for teaching the “tautening” and “relative movement” limitations. See Prelim. Resp. 17 (addressing only Provisur’s citation to paragraphs 33–35 of Konishi). Those paragraphs in Konishi describe, in no uncertain terms, the process of “reassembl[ing]” the conveyor belt unit onto the subframe once “cleaning is completed.” Ex. 1004 ¶¶ 33–41. Textor’s complete and utter disregard of key aspects of Provisur’s reliance on Konishi is fatal to its argument that Provisur’s challenge “falls far short” of the “compelling merits” standard. Prelim. Resp. 19. The cited evidence plainly proves otherwise, indeed, to the point that Provisur is highly likely to prevail on its Konishi-based challenges. In particular, Konishi’s paragraphs 33–37 explain the removal process where “the timing belt 49 . . . becomes loose” so that the base 12 “still equipped with the conveyor belt 14 . . . can be separated from the frame 9” and “processed with predetermined cleaning,” while Konishi’s paragraphs 38–41 explain the installation process where the base 12 “is assembled to the frame 9” so that “a predetermined tension is applied to the timing belt 49.” Id.” slip op. at 11

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

    “In other words, Textor’s sole basis for attacking the Konishi-based obviousness challenges is that the asserted combination lacks claim element 1[C2]. But, as discussed above in Section II.C.1, we reject Textor’s argument that Konishi lacks any teaching or suggestion of that claim element, instead, finding that Konishi discloses it explicitly. Thus, in the absence of any further rebuttal evidence from Textor, we find that Provisur’s Konishi-based obviousness challenges are more than strong enough on their merits to compel our review of at least claims 1 and 22.” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 9,457,487
• Entain Corporate Services Ltd. / MGM Resorts International et al. v. Gan (UK) LimitedAll claims unpatentable
  PTAB · Feb 29, 2024 · IPR2023-00027 · APJ James P Calve · IPR · Final written decision

  Original claims 11–18, 21, and 22 and proposed substitute claims 23–39 were held unpatentable; the revised motion to amend was granted in part and otherwise denied.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “For reasons discussed below, we grant in-part Patent Owner’s RMTA and cancel original claims 1 and 3–10. We otherwise deny Patent Owner’s RMTA to enter revised substitute claims 23–31, which non-contingently amend original claims 1 and 3–10, and we deny Patent Owner’s RMTA to enter revised substitute claims 32–39, which contingently amend original claims 12–14, 16–18, 21, and 22.” slip op. at 3

  • ExcludeMotion to exclude, deniedOther

    “V. PETITIONER’S MOTION TO STRIKE Because our findings and determinations do not rely on the paragraphs of Dr. Shamos’ declaration that Petitioner’s Motion to Strike seeks to strike, we dismiss Petitioner’s Motion to Strike as moot.” slip op. at 104

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

    “Having reviewed the arguments and evidence, we determine Petitioner has shown, by a preponderance of the evidence, that original claims 11–18, 21, and 22 of the challenged claims of the ’296 patent are unpatentable.” slip op. at 3

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'IneligibleStep1 directed to exceptionUnpatentable

    “We determine that Petitioner has shown, by a preponderance of the evidence, that revised substitute claims 23–39 are unpatentable. Specifically, we determine that Petitioner has shown, by a preponderance of the evidence, that revised substitute claims 23–39 are not eligible for patenting under 35 U.S.C. §§ 101, and claims 23–39 are unpatentable under prior art asserted under 35 U.S.C. § 103 as discussed below. See Opp. RMTA 4–6, 8–28.” slip op. at 3

  Patent outcomesUS 8,821,296 unpatentable
  § 101 eligibility§ 103 obviousnesscites Alice · Berkheimer · Enfish · Electric Power
  Patents in suitUS 8,821,296
• Unified Patents, LLC v. Rosen Technologies LLCAll claims unpatentable
  PTAB · Feb 28, 2024 · IPR2022-01402 · APJ Jason W Melvin · IPR · Final written decision

  Claims 1, 3, 4, 14, and 16–20 are unpatentable as obvious over Geiwitz; claims 19 and 20 are also unpatentable over Geiwitz and Cardio Manual.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. LEVEL OF SKILL IN THE ART Petitioner asserts skilled artisans “would have had at least a Bachelor’s degree in Electrical Engineering or a similar degree and at least two years of professional experience,” and would have been “familiar with the circuitry and operation of programmable, touchscreen thermostats having liquid crystal displays.” Pet. 7 (citing Ex. 1003 ¶ 48). Patent Owner does not dispute that definition, and offers that skilled artisans “would have had a bachelor’s degree in electrical engineering or a related field, and at least two years of experience in working with HVAC systems or thermostat systems.” PO Resp. 13–14. We perceive no distinction between how the two definitions might affect our analysis and the parties do not identify any. We adopt Petitioner’s definition, as it is supported by expert testimony.” slip op. at 7

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

    “the touch screen display with graphics (alphanumeric characters and/or icons) on or closely associated with the first virtual button.” Id. at 3:53–56. By using a disjunctive, “or,” the Specification establishes that the legend (e.g., alphanumeric characters) need not be located on the button to which it corresponds. The summary expressly describes that a legend may instead be “closely associated with” the button to which it corresponds. Patent Owner contends that the passage addresses only an “image,” not a “legend.” PO Resp. 8–9. We agree with Petitioner, however, that the “image” in the summary’s passage refers to an image representative of the button, which is separate from “graphics (alphanumeric characters and/or icons)” that are displayed “with” the image. See Pet. Reply 8–9. Thus, the relevant question about the summary’s passage is whether “graphics” corresponds to the claimed “legend.” The specification as a whole shows that a legend refers to graphics (characters or icons) displayed with a virtual button. E.g., Ex. 1001, 8:22–26 (indicating that Figure 8 illustrates “a change of the legend associated with virtual button 116”), 9:29–30 (referring to “legends which may appear with virtual button 116”), 10:37–42 (indicating that Figure 12 illustrates a change in the “legend appearing at button 154”), 10:48–58 (same, as to button 158), 11:8–11 (indicating Figure 13 illustrates changes to button 172’s “numerical legend”). Each time the specification refers to a legend, it does so in connection with alphanumeric characters displayed with the button. Thus, we read the summary’s description of “graphics” as referring to a legend, notwithstanding that it does not expressly do so. With that understanding, the specification directly contradicts Patent Owner’s proposed construction, by disclosing that a legend displayed with a button’s image may be either on or closely associated with the button. Accordingly, we decline to adopt Patent Owner’s asserted construction. The specification’s description somewhat narrows the claim language, discussed above, which does not restrict the legend’s position. Thus, we construe a “legend” as content displayed on or closely associated with a virtual button.” slip op. at 9

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for petitioner

    “2001, filing date of its provision application (US 60/339,511 (Ex. 1005)). Pet. 14. To rely on Geiwitz’s Provisional-application date, Petitioner must show that the Provisional supports at least one of Geiwitz’s claims. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379–81 (Fed. Cir. 2015). Petitioner provides a chart indicating where Geiwitz’s Provisional application supports Geiwitz’s claim 1. Pet. 14–15. Patent Owner does not contest Petitioner’s showing, and has therefore forfeited that argument. See In re NuVasive, Inc., 842 F.3d 1376, 1380–81 (Fed. Cir. 2016). We determine that Petitioner has made an adequate showing. Geiwitz’s Provisional describes its system components, including a “System Back Plane” including a “Platform,” which is depicted in Figure 383. Ex. 1005, 7 (“Platform (figure 383)”), 945 (Fig. 383). The Platform includes “Processor module header ports,” which are depicted in Figures 426–431. Id. at 7 (“Processor module header ports (figure 426 – 431)”). The system components further include “System Expansion Modules,” which include a “Processor Module,” depicted in Figures 450– 455. Id. at 9 (“Processor Module (figure 450 – 455)”). The Provisional describes that the Processor Module plugs into the platform and provides “processing power.” Id. at 170. The Provisional’s Figure 383, depicting the “Platform,” indicates a section labeled “SMART CARD.” Id. at 945 (Fig. 383). Figure 428, depicting part of the Processor module header ports, is labeled “Smart Card Connector.” Id. at 1001 (Fig. 428). And Figure 450, depicting the “Processor Module,” shows a circuit board labeled “Smart Systems Technologies.” Id. at 1031 (Fig. 450). In sum, those disclosures in Geiwitz’s Provisional support a claim to a smart card comprising a programmable microprocessor. Thus, Geiwitz is entitled to an effective date as of its Provisional application.” slip op. at 10

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

    “As discussed above, we do not construe “legend” to require the legend appear on a button; instead, the claims encompass a legend that is “closely associated with” a button, as described in the specification. See supra at 7– 10, § II.B. Geiwitz’s disclosures satisfy the claim language as construed, because the asserted legend is indicative of a first control function of the thermostat and appears closely associated with the Mode button. Patent Owner does not otherwise contest Petitioner’s contentions for claim 1. We have reviewed Petitioner’s contentions and conclude they demonstrate the subject matter of claim 1 is obvious over Geiwitz. In that conclusion, we adopt Petitioner’s reasoning as our own. Pet. 13–60. Patent Owner raises the same argument for claims 3, 16, and 19 (PO Resp. 19–21), and we reach the same conclusion as to those claims for the same reasons discussed for claim 1. See Pet. 61–62, 66–76. For the dependent claims, Patent Owner relies on its asserted deficiencies regarding Petitioner’s showing discussed above. PO Resp. 21. As discussed, we do not agree with those asserted deficiencies. We have reviewed Petitioner’s contentions and conclude they demonstrate the subject matter of claims 3, 4, 14, 17, 18, and 20 would have been obvious. In that conclusion, we adopt Petitioner’s reasoning as our own. Pet. 61–66, 71, 76.” slip op. at 13

  Patent outcomesUS 7,156,318 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,156,318

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.