- Lenovo (United States) Inc. / Motorola Mobility LLC v. Theta IP, LLCNo claims unpatentablePTAB · Oct 16, 2024 · IPR2023-00697 · APJ Barbara A Benoit · IPR · Final written decision
Claims 1, 3, 4, and 8 were not proven unpatentable: Rauhala does not disclose the required simultaneous signal-strength determinations, and Masaaki does not cure the deficiency for claim 4.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Following institution, Patent Owner maintained the same level of ordinary skill proposed in its preliminary response and did not address our discussion of the level of ordinary skill in the art in the Institution Decision. PO Resp. 24–25; see also Prelim. Resp. 24. For the reasons discussed in the Institution Decision, we adopt and apply for this Decision the level of ordinary skill articulated by Petitioner and used previously in our Institution Decision. See Dec. 8–10. In light of our review of the complete record, we find that this formulation is consistent with the ’825 patent, the prior art of record, and is supported by the testimony of Dr. Baker. See Ex. 1002 ¶¶ 27– 31. Our decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that the desired signal and interferer signal must be received at the same time. The plain language of the claim requires the wireless transceiver to “receiv[e] a wireless signal having a desired signal and an interferer signal,” the determining of a signal strength of the interferer signal and the determining of a signal strength of the desired signal must be performed at the same time; otherwise, the determinations of signal strengths would not be of the same wireless signal. The specification supports this understanding. “When a receiver is actively receiving a desired signal, each block in the signal path has at its input the desired signal as well as noise and possibly interfering signals.” Ex. 1001, 5:20–22; see also id. at 5:31–33 (“FIGS. 2A and 2B illustrate examples of desired signals, interferers, and noise that may be received by one of the various circuits in a” slip op. at 21
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Rauhala does not state that the signal strengths are measured simultaneously or at the same time. Indeed, as discussed above, Rauhala indicates unequivocally in the same paragraph the opposite—that detector DET provides to control unit 42 “an indication about either the receive channel signal strength RSS or the strength of any signal on the reception band.” Ex. 1004 ¶ 17. Rauhala describes that “control unit 42 provides two one-bit control signals cA and cM” based on indications received from detector DET. Id. Importantly, Rauhala indicates that “at the same time as” describes how the control unit 42 uses the received inputs RSS and RSSn shown in Figure 4, which are described earlier in paragraph 17 as indications of either RSS or RSSn from detector DET. Id. (“Signal cA is 0 when signal RSS is greater than S4 and signal RSSn is at the 11 Dr. Baker’s reply declaration correctly quotes Rauhala paragraph 17 but cites to paragraph 18. We deem this harmless error. same time smaller than Sn. . . . Signal cM is 1 when signal RSS is not greater than S4 and signal RSSn is at the same time at least Sn. Otherwise, signal cM is 0.”). The burden remains on Petitioner to demonstrate by a preponderance of the evidence that Rauhala discloses the disputed limitations as arranged or combined in the claim. Petitioner does not persuasively reconcile these “either/or” statements regarding the functioning of detector DET with the “at the same time as” statements regarding control signals output by control unit 42 in paragraph 17. We do not find persuasive Petitioner counsel’s position expressed at the hearing that Rauhala’s “either/or” statements are “simply an imprecise description” (Tr. 16:22–24). We do not see a lack of precision in Rauhala’s “either/or” statements.” slip op. at 30
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“When asked at his deposition to explain Rauhala’s use of the word “or” regarding the functioning of detector DET, Dr. Baker asserted that “[detectors] can be designed to determine RSS or RSSn.” Ex. 2016, 85:5– 12. We find Dr. Baker’s testimony that “it’s reasonable that if you can design . . . the detector to detect one or the other, you can also design it to detect both” to be without factual support. Id. at 85:13–16. He points to no textbook or other independent evidence to support that would have led one of ordinary skill to design such a detector or to support that one of ordinary skill would have understood Rauhala’s detector to be so designed. Furthermore, Dr. Baker recognizes that “Rauhala doesn’t teach the details of what’s in the detector.” Id. at 91:6–7. We give little weight to Dr. Baker’s unsupported testimony that one could design a detector to detect both RSS and RSSn from the same wireless signal. See 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.”); see also Xerox Corp. v. Bytemark, Inc., No. IPR2022-00624, 2022 WL 3648989, at *6 (PTAB 2022) (precedential) (Director affirming because “the cited declaration testimony is conclusory and unsupported, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight”).” slip op. at 31
Patent outcomesUS 10,129,825 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,129,825 - Lenovo (United States) Inc. / Motorola Mobility LLC v. Theta IP, LLCNo claims unpatentablePTAB · Oct 16, 2024 · IPR2023-00698 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 7–11, 13, and 19–21 were not shown unpatentable because Rauhala does not disclose simultaneous desired and interferer signal-strength determinations, defeating anticipation and the obviousness combination.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The two proposals are materially similar in the education requirement, but differ marginally in professional experience required (three versus five years). See supra. While we were persuaded, on the preliminary record, that both Petitioner’s and Patent Owner’s proposals were consistent with the problems and solutions in the ’202 patent and the prior art of record, on balance, we determined that Petitioner’s proposal was a better reflection of the level of skill in the prior art, and we therefore adopted it for our Institution Decision. See Institution Dec. 12–13. For this Decision, we adopt the description of the person of ordinary skill articulated by Petitioner and used previously in our Institution Decision. In light of our review of the complete record, we find that this formulation is consistent with the ’202 patent, the prior art of record, and is supported by the testimony of Dr. Baker. See Baker I Decl. ¶¶ 28–32. Our Decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 12
- Expert testimonyPetitioner expert discountedDecided for patent owner
“85:13–16. He admits that “Rauhala doesn’t teach the details of what’s in the detector.” Id. at 91:6–7. He points to no textbook or other independent evidence that would have led a person of ordinary skill to design such a detector. Our Trial Practice Guide cautions against crediting such unsupported testimony: The Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010). However, the testimony must be based on sufficient facts and data. Fed. R. Evid. 702(b). “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). Patent Trial and Appeal Board Consolidated Trial Practice Guide 35 (Nov. 2019).7 We therefore give Dr, Baker’s unsupported testimony on this issue little weight.” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017). Having considered the positions of the parties, we find that for the purpose of this decision, we do not need to construe these terms to resolve a dispute.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“requirement.” Pet. Reply 5. We do not agree with Petitioner. We find that the language of the claims supports Patent Owner’s argument that the desired signal and the interferer signal are received together. As discussed infra, claim limitations 7.7 and 7.8 recite determining a signal strength of the interferer signal and determining a signal strength of the desired signal. These determinations must be performed at the same time; otherwise, the determinations of signal strengths would not be of the same wireless signal. See Larson II Decl. ¶ 70; Baker II Decl. ¶¶ 48–49 (explaining that consideration of signal strengths detected at the same time would be “essential”). The specification of the ’202 patent further supports this finding: “When a receiver is actively receiving a desired signal, each block in the signal path has at its input the desired signal as well as noise and possibly interfering signals.” Ex. 1001, 5:22–24; see also Figs. 2A, 2B (showing interferer signals and desired signals together).” slip op. at 17
Patent outcomesUS 10,524,202 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 10,524,202 - Masimo Corporation v. Apple Inc.No claims unpatentablePTAB · Oct 15, 2024 · IPR2023-00745 · APJ Robert L Kinder · IPR · Final written decision
Claims 1–4 and 8–22 were not shown unpatentable because Mills did not disclose the required embedded structure and Markel combined with Mills did not teach it; the revised motion to amend was dismissed as moot.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
“Patent Owner’s Revised Contingent Motion to Amend asserts that in “the event the Board finds at least one challenged [Revised Motion to Amend] claim unpatentable, [Patent Owner] respectfully requests that the Board grant this Motion with respect to the corresponding proposed substitute claim(s).” Paper 27, 1. Because we determine that Petitioner has not established that any of the challenged claims 1–4 and 8–22 are unpatentable, Patent Owner’s Revised Contingent Motion to Amend is moot.” slip op. at 61
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s proposed level of ordinary skill in the art is somewhat broader in both education and proposed work experience. Patent Owner’s proposed work experience is somewhat vague and potentially outside the scope of the claimed invention. For example, the requirement that the person of ordinary skill in the art have experience with the “capture and processing of data or information, including but not limited to physiological information,” would seemingly encompass data processing areas that do not relate to the scope of the claimed invention. We adopt Petitioner’s level of the level of ordinary skill in art because it is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). Our analysis and the end result are the same under either proposed definition.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“structure where a lead is embedded in a portion of the enclosure from other embodiments where a lead is merely positioned against or in parallel contact with a portion of the enclosure. See Ex. 2003 ¶¶ 36–37. The Specification describes distinct embodiments such as “lead 472 of the heart sensor can be positioned against the back surface of bezel 460,” or “[a]lternatively, lead 472 can be placed within the thickness of bezel 460 (e.g., in a pocket within the bezel wall), but underneath the outer surface of the bezel.” Ex. 9:44–48. We agree with Patent Owner, and Dr. Kenny, that “[t]his passage distinguishes a lead that is embedded in a portion of the enclosure from a lead that is merely ‘positioned against’ or in parallel contact with a portion of the enclosure.” PO Resp. 6–7 (citing Ex. 2003 ¶¶ 33–35). See also Ex. 2008, 31:10–33:18, 109:18–110:19 (Petitioner’s expert, Mr. Oslan, suggesting that a first component or object in parallel contact with and positioned under a second component or object would not necessarily indicate that the first component or object is embedded in the second component or object). Similarly, we also agree that “the claims of the ’257 use the term ‘embedded in’ while also using the word ‘embedded’ in other contexts, which” indicates distinct claim scope for “the term ‘embedded in,’” versus “the broader term ‘embedded.’” Ex. 2003 ¶ 38. For instance, claim 9 distinctly requires “embedded with,” which is a broader term that, according to Dr. Kenny, encompasses embodiments where a lead may be adjacent/parallel to the first portion of the enclosure. Id.” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“under the exterior of the first portion” (see Pet. 21–22, 24–25; Pet. Reply 4); and (3) leaf spring 62 is embedded in housing 12 and electrode 14 (see Pet. 22–24). None of Petitioner’s mappings disclose every element of claim 1 and Petitioner improperly jumps between these various mappings without fully examining a single mapping for each and every limitation of claim 1. See Pet. 18–25. In essence, Petitioner invites the Board to piece together a single theory that meets all claim elements from these disparate theories that each require distinct structure within Mills. See Amazon.com, Inc., et al. v. Avago Technologies General IP (Singapore) PTE. LTD., IPR2017-01112, Paper 11, at 13 (PTAB Aug. 23, 2017) (“Petitioner is inviting us to assume the role of archeologist of the record, which invitation we decline.”).” slip op. at 36
Patent outcomesUS 10,076,257 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,076,257 - Masimo Corporation v. Apple Inc.No claims unpatentablePTAB · Sep 11, 2024 · IPR2023-00664 · APJ Robert L Kinder · IPR · Final written decision
Claims 1–24 were not determined unpatentable because the cited combinations failed to teach or suggest the claimed selectable widget functionality and lacked a coherent rationale to combine.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that: A POSITA [person of ordinary skill in the art] of the ’352 patent would have had at least a bachelor’s degree in a discipline related to human-computer interaction, such as Human Factors, Computer Science, Computer Engineering, or an equivalent discipline, and at least two years of experience working with touchscreen user interfaces. More education could substitute for less work experience, and vice-versa. Pet. 12 (citing Ex. 1003 ¶ 34).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In our Decision to Institute, we construed “input that is directed to a portion of” a user interface. Paper 8, at 9; see also Pet. 24–25. Because this interpretation is not necessary for our final determination, we do not repeat it here.” slip op. at 9
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Chae’s annotated Figure 6(b) “illustrates unlocking the second SIM (SIM2) according to the method for operating a mobile terminal.” Ex. 1005 ¶ 19. Ex. 1005, Fig. 6(b). Although Figure 6(b) “displays different items” (Ex. 1005 ¶ 109) such as the depictions of people (Lauran and Chris) and partly cloudy weather, Chae does not suggest that selecting these graphics causes display of an application. See PO Resp. 21. Petitioner contends that an ordinary artisan would have understood that selecting one of Chae’s graphics items must cause display of an application (see Pet. 55; Pet. Reply 11), but Chae does not teach or suggest this feature. As Dr. Cockburn persuasively testifies, “nothing in Chae indicates that the icons displayed in Figure 6(b) are dynamic or change in any way in response to content in the corresponding applications, and that the icons when selected causes display of the corresponding applications.” Ex. 2003 ¶ 46. The mere possibility that Chae’s generic graphical objects could perform a function is speculation because nothing in Chae teaches that selecting that graphical object would display a corresponding application. See id. The display of icons in Figure 6(b) does not inform the person of ordinary skill in the art whether the item has to indicate or contain content from an underlying application, and also whether it is selectable to get to that corresponding application as required by the claims. See Tr. 32:21–33:3. Petitioner’s reliance of the testimony of Dr. Rosenberg (see Ex. 1003 ¶ 91) is unpersuasive because Dr. Rosenberg merely restates the Petitioner’s assertions without reliance on persuasive evidence of record. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, at 5 (Feb 10, 2023) (Vidal, Dir.) (“[T]he Board was correct in giving little weight to Petitioner’s expert because the expert declaration merely offered conclusory assertions without underlying factual support and repeated, verbatim, Petitioner’s conclusory arguments.”). When addressing Chae’s three graphics in Figure 6(b) during cross-examination, Dr. Rosenberg testifies that “[t]hey’re not a numbered element, so they’re not spoken about specifically those three ones”). Ex. 2005, 56:9–14, 54:21–22 (“Chae doesn’t talk about the weather icon”). Further, the final record does not support Dr. Rosenberg’s testimony that a person of ordinary skill in the art would have understood that “part of the well-known functionality of widgets was that selecting a widget would cause ‘display of an application corresponding to the respective user interface object.’” Ex. 1003 ¶ 91. None of the references relied upon by Petitioner discloses this alleged “well-known functionality of widgets,” nor does the evidence of record support any industry standard usage of the term widget in the appropriate timeframe. See Ex. 2003 ¶¶ 46–48. Petitioner has also not persuasively shown that selections of Chae’s SIM card icons result in the display of an application as claimed. See Ex. 1005 ¶¶ 152–154, Fig. 22; see also Tr. 43:14–17 (“the claimed interface object causes display of the corresponding application, but selection of this paragraph 152, Figure 22 widget causes selection of something different, a sim environment.”). We find Patent Owner’s position more persuasive, when Chae uses the word widget, it is not using that word to refer to something that launches into an application, but instead Chae’s widgets show use-state information related to a SIM environment. See Ex. 1005 ¶¶ 152–154; Tr. 33:3–12. Specifically, Chae discloses “widgets that show use-state information of the first and second SIMs (SIM1 and SIM2),” and “when a user selects one of [the] widgets,” it “unlocks the SIM corresponding to the dragged widget.” Ex. 1005 ¶¶ 152, 153, Fig. 3 (unlocking SIM displays home screen customized to unlocked SIM). Chae does not support that these widgets relate to the graphic items in its Figure 6(b), nor does Chae explain how its widgets could be understood as the claimed “user interface objects” of the widget screen user interface. As explained persuasively by Dr. Cockburn, “the only widgets that are described in Chae are widgets relating to the use state of the multiple SIM cards,” and “[t]hese widgets described in Chae do not correspond to applications and thus do not cause display of applications when the widgets are selected.” Ex. 2003 ¶ 46 (quoting Ex. 1005 ¶ 152).” slip op. at 25
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Based on the final record before us, we conclude that Petitioner has not persuasively shown that the combination of prior art teaches the required widget limitation of “a respective user interface object . . . when selected, causes display of an application corresponding to the respective user interface object” as recited in claim 1. Petitioner relies on Chae’s Figure 6(b), which is reproduced below: Chae’s annotated Figure 6(b) “illustrates unlocking the second SIM (SIM2) according to the method for operating a mobile terminal.” Ex. 1005 ¶ 19. Ex. 1005, Fig. 6(b). Although Figure 6(b) “displays different items” (Ex. 1005 ¶ 109) such as the depictions of people (Lauran and Chris) and partly cloudy weather, Chae does not suggest that selecting these graphics causes display of an application. See PO Resp. 21. Petitioner contends that an ordinary artisan would have understood that selecting one of Chae’s graphics items must cause display of an application (see Pet. 55; Pet. Reply 11), but Chae does not teach or suggest this feature. As Dr. Cockburn persuasively testifies, “nothing in Chae indicates that the icons displayed in Figure 6(b) are dynamic or change in any way in response to content in the corresponding applications, and that the icons when selected causes display of the corresponding applications.” Ex. 2003 ¶ 46. The mere possibility that Chae’s generic graphical objects could perform a function is speculation because nothing in Chae teaches that selecting that graphical object would display a corresponding application. See id. The display of icons in Figure 6(b) does not inform the person of ordinary skill in the art whether the item has to indicate or contain content from an underlying application, and also whether it is selectable to get to that corresponding application as required by the claims. See Tr. 32:21–33:3.” slip op. at 24
Patent outcomesUS 11,106,352 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,106,352 - Intuit Inc. v. Samesurf, Inc.No claims unpatentablePTAB · Jun 25, 2024 · IPR2023-00341 · APJ Barbara A Benoit · IPR · Final written decision
Claims 1–16 were not shown unpatentable over Lebrun and Wang or over Prajapat and Wang because the combinations did not teach key invitation and webpage retrieval limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for patent owner
“of the parties, we found that a person of ordinary skill in the art (“POSITA”) “would have had (1) at least a bachelor’s degree in computer science, 7 Patent Owner has not offered objective evidence of non-obviousness. See generally PO Resp.; PO Sur-reply; see also Pet. 21 (indicating Petitioner is not aware of any evidence of secondary considerations). least two years of work experience in software development and/or web-based software,” which reflected Petitioner’s proposal. Dec. 12; see Dec. 10–12 (discussing the respective proposals and level of ordinary skill reflected in the challenged patent and asserted prior art). Patent Owner accepts this level of ordinary skill in the art. PO Resp. 37. Accordingly, we apply this determination of the level of ordinary skill in the art for purposes of this Decision.” slip op. at 12
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“Petitioner’s citations in this regard to Dr. Lieberman’s declaration do not adequately support Petitioner’s “forwarding” contention. Pet. Reply 8 (citing Ex. 1003 ¶¶ 37, 149); Ex. 1003 ¶ 37 (indicating the challenged patent describes the invitation as being sent by email, instant message, or social network communication); Ex. 1003 ¶ 149 (describing the group-surfing server receiving the session-creation message, creating the group-surfing session, and “inform[ing] the participants in the group-surfing session”). Petitioner does not identify any testimony from Dr. Lieberman that supports Petitioner’s Reply position that Lebrun’s group-surfing server “forwards” the session-creation message to the group-surfing session participants, nor are we aware of any such testimony. See, e.g., Ex. 1003 ¶ 149 (The group-surfing server “responds to the group session request ‘by (1) creating a group-surfing session, and (2) informing the participants [web clients] in the group-surfing session.”); see generally Ex. 1034. Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 29
- Strike new argumentNew argument disregardedGranted in part
“surfing server as forwarding the session-creation message to the invited web client. PO Sur-reply 12. Although Lebrun describes the group-surfing server as “informing the participants in the group-surfing server session” after receiving the session-creation message and creating the group-surfing session, Lebrun does not describe forwarding or otherwise sending the session-creation message to the participants. Ex. 1005, 32:26–28, 44:12–14. Petitioner’s citations in this regard to Dr. Lieberman’s declaration do not adequately support Petitioner’s “forwarding” contention. Pet. Reply 8 (citing Ex. 1003 ¶¶ 37, 149); Ex. 1003 ¶ 37 (indicating the challenged patent describes the invitation as being sent by email, instant message, or social network communication); Ex. 1003 ¶ 149 (describing the group-surfing server receiving the session-creation message, creating the group-surfing session, and “inform[ing] the participants in the group-surfing session”). Petitioner does not identify any testimony from Dr. Lieberman that supports Petitioner’s Reply position that Lebrun’s group-surfing server “forwards” the session-creation message to the group-surfing session participants, nor are we aware of any such testimony. See, e.g., Ex. 1003 ¶ 149 (The group-surfing server “responds to the group session request ‘by (1) creating a group-surfing session, and (2) informing the participants [web clients] in the group-surfing session.”); see generally Ex. 1034. Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 29
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“receive webpage content from the website server in particular ways as identified in limitations [1e] and [1g]. Similarly, claim 1 requires the invitee device to retrieve data from the website server in response to receiving “the information related to the shared web browsing interaction from the synchronization server” (limitation [1f.iii]). For the reasons discussed above, Petitioner has not shown by a preponderance of the evidence its combination of Lebrun and Wang does so. For the required website server interaction, in its Petition, Petitioner relies on Lebrun’s description of an alternative embodiment applicable only when no cookies or other identity information are involved (Ex. 1005, 35:17–19). See, e.g., Pet. 30 (citing Ex. 1005, 35:17–19). As Patent Owner indicates, this alternative is not relevant to the subject matter recited in claim 1 which requires identity information. PO Resp. 45. Petitioner does not address this shortcoming in its Reply. See generally Pet. Reply. Rather, in its Reply, for website server interaction, Petitioner relies on Lebrun’s functionality of sending a web page from the web server to the web client as shown in Lebrun’s Figure 1. See, e.g., Pet. Reply 11 (citing Ex. 1005, 32:21–24, 31:27–30, Fig. 1). Specifically, Petitioner contends that Lebrun discloses that (i) a URL for the initial web page is included in session-creation message 151 (Ex. 1005, 32:21–24), (ii) the web site sends a web page directly to the web client (Fig. 1), and (iii) the web site delivers information 132 to web clients or the group-surfing server 140 “in response Pet. Reply 11. Although this shows the web site sending a web page directly to a web client, the prior art of Lebrun does not do so in the manner required by the claims (limitations [1e], [1f.i], [1f.iii], [1g]).” slip op. at 46
Patent outcomesUS 9,483,448 not shown unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,483,448 - Dr. Reddy’S Laboratories, Inc. v. Genentech, Inc., Hoffman-La Roche AG, And Abbvie Inc.No claims unpatentablePTAB · Apr 16, 2024 · IPR2023-00052 · APJ Jeffrey N Fredman · IPR · Final written decision
The Board held claims 1–4, 8–14, and 18–26 not shown unpatentable because they were entitled to priority before the November 2018 Venclexta Label, which therefore was not prior art.
RulingsFinal written decision- Skill levelSkill level board ownOther
“We do not discern a substantive difference between the parties’ respective definitions for the level of ordinary skill in the art. Although Petitioner did not expressly recite hematological malignancies, Petitioner did refer to expertise in clinical oncology, which would encompass the blood cancers recited in the claims. Neither party identifies a difference in the analysis or conclusions that would be based on differences in the ordinary skill in the art analysis. Accordingly, we find the parties’ respective definitions to be equivalent and consistent with the level of ordinary skill in the art as reflected by the prior art in this proceeding. 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 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties do not identify any issue relating to the preamble that would impact our analysis. We recognize that Patent Owner is suggesting that Petitioner’s expert, at least, is reading the word “clinical” into the treatment language of claim 1. However, the plain language of the claim 1 preamble states “treating lymphoma or leukemia in a human patient” and is supported by a straightforward definition in the Specification of the ’087 patent, expressly limiting the invention to treatment of human patients. See Ex. 1001, 16:25–38. We therefore find that the preamble terms do not need claim construction because there is no actual dispute suggesting that, for example, claim 1 implicitly recites the term “clinical.” 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 5
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)EnabledEntitled to earlier dateDecided for patent owner
“d. Analysis Considering the Wands factors as a whole, we find that the limited breadth of the claims, presence of several working examples, significant amount of direction and guidance provided by the ’087 patent, predictability in treating blood cancers with Bcl-2 inhibitors like GDC-0199, and high level of skill in the art are balanced against a large quantity of experimentation. Based on our consideration of the entirety of the evidence, we find that a preponderance of the evidence supports the conclusion that undue experimentation would not have been required to make and use the invention commensurate in scope with the claims of the ’087 patent. One underlying theme of Petitioner’s contentions and Petitioner’s expert testimony is the repeated contention that clinical trials were not completed by Patent Owner. See, e.g., Pet. 48 (“venetoclax (GDC-0199) was not FDA-approved”); Ex. 1020 ¶ 193. We find these arguments unpersuasive as we agree with Patent Owner that “[i]t is well established that a patent may be secured, and typically is secured, before the conclusion of clinical trials.” In re Montgomery, 67 F.3d 1375, 1382 (Fed. Cir. 2012). Particularly as to the dependent claims, a preponderance of the evidence of record does not support a finding that undue experimentation would have been required to administer three different doses of GDC-0199 starting with 100 mg, to use multiple daily dosing cycles of one day, to continue until disease progression occurs, or to combine with other treatment compounds. We find that a preponderance of the evidence does not support Petitioner’s position that any of the dependent claims fail to comply with the enablement requirement.” slip op. at 23
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“Applying Rai and Wertheim to the instant facts, we agree with Patent Owner that, factually and legally, in the ’087 patent “the claimed dosages of 100 mg, 200 mg, and/or 400 mg of GDC-0199 are adequately supported.” PO Second Suppl. Brief 2 (citing PO Resp. 11, 27–29; PO Sur-reply 19, 21– 22; Ex. 1001, 24:20–29.) In particular, the ’087 patent describes all three specific dosage values 100 mg, 200 mg, and 400 mg in the context of an escalating drug dosage series and Petitioner points to no persuasive statements in the specification that dispute either the effectiveness or the operability of GDC-0199 at any of these dosages.” slip op. at 32
Patent outcomesUS 11,110,087 not shown unpatentableClaim construction§ 102 anticipation§ 112 disclosurePatents in suitUS 11,110,087 - Restem, LLC. v. Jadi Cell, LLCNo claims unpatentablePTAB · Apr 18, 2023 · IPR2021-01535 · APJ Devon Zastrow Newman · IPR · Final written decision
Claims 1–15 were not proven unpatentable: Majore did not anticipate claims 1–13 and 15, and the asserted obviousness combinations did not establish the claimed limitations.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedDecided for patent owner
“Ex. 1007 ¶¶ 132, 133. Importantly, however, Dr. Olson does not cite anything to support his opinion that the ordinary artisan would have known that MSCs could be cultured to be renewable from subepithelial UC tissue. Nor does Dr. Olson explain why the artisan would have had this understanding aside from simply stating it. Majore uses the word “subepithelial” only once to explain that primitive stem cells are “distributed in subepithelial and intervascular regions,” but this does not teach what Dr. Olson asserts. Accordingly, Dr. Olson’s testimony is entitled to little weight. Xerox Corp., IPR2022-00624, Paper 9 at 15–16 (finding that an expert’s conclusory assertions that repeat the proposition for which they are offered without “any additional supporting evidence or provide any technical reasoning” in support are “conclusory and unsupported, add[] little to the conclusory assertion[s] for which [they are] offered to support, and is” slip op. at 52
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“21 The parties do not dispute that the preamble’s recitation of “isolated cell” serves as a limitation to claim 1 as it provides antecedent basis for its recitation later in the body of the claim. Accordingly, we treat the preamble as limiting. “When limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.” See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003).” slip op. at 31
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“[JUDGE NEWMAN:] So if -- if the comparison is possible, why did you not present evidence of that comparison? MR. FITZPATRICK: We --we’ve had the -- we had this discussion with our -- with our expert, and our conclusion was that it’s just not -- it wasn’t necessary. The conclusion was that the -- the evidence that’s in the -- in the prior art references, including the fact that it clearly practices the exact same steps as the claims, that was sufficient to -- and would anticipate or render obvious the claims. That’s the only reason we didn’t present evidence -- our own evidence.” slip op. at 38
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Ex. 1007 ¶ 168 (alteration in original). We agree that an ordinary artisan would be motivated to look to the teachings of analogous references for information, but to establish obviousness, a party must show that “there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Petitioner has not provided sufficient rationale to explain why the ordinary artisan would have been motivated to make the isolated cell with the specific marker profile or why the artisan would have looked to the cited references themselves out of the wide range of references available in the art.” slip op. at 64
Patent outcomesUS 9,803,176 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,803,176 - Incyte Corporation v. Concert Pharmaceuticals, Inc.No claims unpatentablePTAB · May 11, 2022 · PGR2021-00006 · APJ Devon Zastrow Newman · PGR · Final written decision
The Board held claims 1–7 and 9–21 not shown unpatentable over either obviousness ground because Petitioner did not establish motivation to select Compound (I) from Silverman’s genus.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedOther
“It is not necessary for an expert’s experience or expertise to precisely match the art at issue. SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010). However, one offering expert testimony must at least have ordinary skill in the art to provide relevant and reliable testimony that is helpful to the factfinder. Kyocera Senco Indus. Tools, Inc. v. ITC, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022). “The Board has broad discretion to assign weight to be accorded expert testimony.” Consolidated Trial Practice Guide 35 (available at https://www.uspto.gov/sites/default/files/documents/ tpgnov.pdf?MURL=). Dr. Patterson has a Ph.D. in Chemistry and over 30 years of experience in drug design, drug administration, evaluation of drug effectiveness, and participated in drug design for over 20 years. Ex. 1007 ¶¶ 4–10; Ex. 1008, 1–2. He is author or co-author on over eight peer-reviewed journal articles involving medicinal chemistry. Ex. 1007 ¶ 5. We find this level of skill to meet the qualifications for the level of skill in the art under the training and experience portion of the definition we have adopted for purposes of this opinion (see § II.B.), reproduced below: a Ph.D. in chemistry, pharmaceutical sciences, molecular biology, or a similar field, or an M.D. with similar background. A POSA would also have had at least several years of experience with drug design, drug development, clinical trials, or access to other individuals with that knowledge and experience. Likewise, a POSA would have had knowledge and experience in treating hair loss disorders, or access to a person with that knowledge and experience. We note that Dr. Patterson himself also proposes this definition. Id. ¶ 102. However, Dr. Patterson does not have “knowledge and experience in treating hair loss disorders” and did not opine that, in regards to his testimony, he had access to a person with that knowledge and experience, as is proposed in the definition. See generally, Ex. 1007. Accordingly, we find Dr. Patterson qualified to opine on the level of ordinary skill with regard to issues of drug design, evaluation of effectiveness, and drug administration, but we find he is not adequately qualified to opine on the level of ordinary skill with regard to issues of treating hair loss disorders.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner proposes the same definition as Petitioner, but adds that the skilled artisan “would also have had experience in JAK inhibition, deuteration, and AA [alopecia areata] formulations, or access to a person with that knowledge and experience.” Resp. 15 (citing Ex. 2059 ¶ 14). Patent Owner’s expert Dr. Ko critiques Petitioner’s proposed definition as “incomplete, because it lacks any requirement for experience, or access to individuals with experience, in JAK inhibition, deuteration, and AA formulations.” Ex. 2059 ¶ 16. However, neither Dr. Ko nor Patent Owner explains what difference this additional direct experience would have provided to an artisan with the skill level proposed by Petitioner, particularly when Petitioner’s definition includes “experience in treating hair loss disorders,” and for which the record contains evidence that existing JAK inhibitors such as ruxolitinib had been identified as causing reversal of hair loss caused by AA. Ex. 1003, 1043. Accordingly, we adopt Petitioner’s proposed definition as consistent with the level of skill apparent in the cited prior art. In any event, as Patent Owner does not explain why its alternative definition would have any bearing on the outcome of the present case, and as we discern no appreciable difference in the parties’ definitions, we note our findings and conclusions would be the same regardless of which definition were adopted. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. 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 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We construe claims using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100. Therefore, we construe the challenged claims under the framework set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc). Under this framework, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art (“POSA”), at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id. Only those terms that are in controversy need be construed and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 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)). We have considered Petitioner’s claim construction proposals (see Pet. 21–23), which are uncontested (see generally Resp., not addressing construction), and find that it is not necessary to expressly construe any claim term for purposes of rendering this Decision.” slip op. at 13
- Novelty / Anticipation (§102) › Prior-art status of a reference › Applicant-admitted prior artReference not prior artDecided for patent owner
“Section 102(b)(1) provides two exceptions to § 102(a)(1) for disclosures made within one year of the effective filing date. Specifically, 35 U.S.C. § 102(b)(1) provides that a disclosure made one year or less before the effective filing date of a claimed invention shall not be prior art under 35 U.S.C. § 102(a)(1) with respect to the claimed invention if: (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. 35 U.S.C. § 102(b)(1).” slip op. at 16
Patent outcomesUS 10,561,659 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,561,659 - Apple Inc. v. Masimo CorporationNo claims unpatentablePTAB · Apr 12, 2022 · IPR2020-01524 · APJ Robert L Kinder · IPR · Final written decision
The Board held claims 1–16 not unpatentable because Petitioner failed to prove obviousness over the asserted Richardson-based grounds, including the required distinct, nonzero duty cycles.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Based on the final record, we find Patent Owner’s proposed interpretation of “duty cycle” persuasive. The evidence cited supports “duty cycle” to mean “the ratio of operating time (or on time) of a light source to the total time period during which the light source is intermittently operated, expressed as a percentage.” See Ex. 2002 ¶ 36 (relying on an electronics dictionary and testifying as to how the ’776 patent uses “duty cycle” consistent with its plain and ordinary meaning to require a ratio of operating time to total elapsed time). We are persuaded by the Specification of the ’776 patent describing the “duty cycle” as the ratio of the operating time (or on time) of the red and infrared LEDs to the total time period during which the LEDs are intermittently operated, expressed as a percentage. See Ex. 1001, 2:43–44; Ex. 2004, 225; Ex. 2002 ¶¶ 37, 39. The duty cycle is described as consistently being “in the range of about 3.125% to about 25%.” Ex. 1001, 2:43–44, Figs. 5, 8. The weight of the evidence, including the claim language and Specification, convinces us that neither the first nor the second duty cycles can be 0%. The claims require the first and second control protocol light sources to generate light so that the patient monitor can calculate a pulse rate based on the light. See Ex. 1001, 11:45–12:21 (“when operating according to the first control protocol, calculating . . . measurement values of the pulse rate, . . . responsive to light from the first control protocol light source” and “calculating the measurement values of the pulse rate, . . . responsive to light from the second control protocol light source”); Ex. 2002 ¶¶ 41, 42. The first and second duty cycles cannot be 0% because the light sources of the first and second control protocol light source would not generate light to enable pulse rate calculation as required by the claims. See Ex. 2002 ¶ 42 (“[I]f the first control protocol light source had a duty cycle of 0%, the light source would be inactive and would not generate light. If the light source did not generate light the monitor could not calculate the ‘measurement” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Ordinary Skill in the Art Petitioner identifies the appropriate level of skill in the art as that possessed by a person having “a Bachelor of Science degree in an academic discipline emphasizing the design of electrical, computer, or software technologies, in combination with training or at least one to two years of related work experience with capture and processing of data or information, including but not limited to physiological monitoring technologies.” Pet. 6 (citing Ex. 1003 ¶ 32 (“someone with a working knowledge of physiological monitoring technologies”)). “Alternatively, the person could have also had a 1 Neither party has introduced objective evidence of non-obviousness. See Tr. 23:25–24:3. Master of Science degree in a relevant academic discipline with less than a year of related work experience in the same discipline.” Id. Patent Owner makes several observations regarding Petitioner’s identified level of skill in the art but, “for this proceeding, [Patent Owner] applies the asserted level of skill identified in the Petition.” PO Resp. 11– 12. We adopt Petitioner’s assessment as set forth above, which appears consistent with the level of skill reflected in the Specification and prior art.” slip op. at 22
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“generated by the source is adjusted to optimize the signal to noise ratio and to minimize power consumption.” Ex. 1006, 11:54–57; Pet. 46, 49, 50. Turcott conveys that this “can be done by adjusting the drive current, the frequency of the pulse train, the pulse duration, or the duty cycle of the pulse train.” Ex. 1006, 11:57–59. Dr. Anthony contends that Turcott describes shifting the frequency of the pulse train and adjusting the duty cycle from one duty cycle to another, and infers that these things could be done during normal operation of the device to reduce power consumption. See, e.g., Ex. 1003 ¶¶ 81, 82, 87. We do not agree that Turcott teaches shifting the frequency of the pulse train or adjusting the duty cycle during normal operation of the device as alleged by Petitioner. We have considered Dr. Anthony’s testimony as to these points, but we determine that the scope of Turcott’s teachings are better explained by Dr. Madisetti. We find more persuasive Dr. Madisetti’s testimony and reasoning that a person of ordinary skill in the art would have understood that Turcott’s adjustments would happen during device design or setup, and not during operation of the device. Ex. 2002 ¶¶ 101–105. This is so because Turcott discloses operating at a single, low duty cycle that minimizes power consumption. See Ex. 2002 ¶ 104; Ex. 1006, 11:51–52 (“To conserve energy, the source is preferably driven with a low duty cycle pulse train.”). We also find persuasive Dr. Madisetti’s cross-examination testimony that the use of the terminology “optical power generated by the source is adjusted” in Turcott, “refers and describes to a POSA that it’s adjusted, past tense, at design time or manufacturing or setup,” and that “Turcott refers to this adjusted in past tense through the term ‘adjusting’ referring to that time at manufacturing or setup.” Ex. 1038, 22:16–24:15.” slip op. at 43
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“As we determined above, the claimed first and second duty cycles cannot be 0%. This determination precludes Petitioner’s first mapping of Richardson from reading on claims 1 and 11. Petitioner identifies the first mapping of Richardson as the transition of Richardson’s oximeter from State 2 to State 1. Pet. 10 (“For this first mapping of Richardson . . . the claim elements . . . are mapped to disclosure in Richardson describing the oximeter transitioning from State 2 (as the first control protocol) to State 1 (as the second control protocol).”). Petitioner argues that State 2 (blue below) is the “first control protocol” and State 1 (orange below) is the “second control protocol” required by claims 1 and 11. Patent Owner’s annotated Figure 2 of Richardson (Ex. 1004) describes implementing the noise reduction methods in a pulse oximeter having three states, including State 1 (highlighted in orange) and State 2 (highlighted in blue). PO Resp. 33. Richardson’s pulse oximeter transitions from State 1 to State 2 “[e]very 30 seconds,” and “[t]he purpose of State 2 is to detect new noise sources that may have appeared since the last State 0 measurements.” Ex. 1004, 9:39–42. In State 2, the oximeter reassesses the noise “by turning off one LED; typically the red LED,” for about 1.4 seconds. Id. at 6:2–3, 9:52–53. When the 1.4 seconds (i.e., idle time) expires, the oximeter automatically returns to State 1 where it uses the newly estimated noise values. Id. at 9:63–65; see also id. at 9:66–10:5 (discussing idle time). When operating in State 1, the oximeter has both LEDs turned on. Id. at 5:55–67. Petitioner argues that the red LED “has a duty cycle of 0%” in State 2 and a duty cycle of “at least 25%” in State 1. Pet. 16. Petitioner admits that in State 2 “the red light source is turned off.” Id. As we determined in the claim construction analysis, a person of ordinary skill in the art would have understood that the “first duty cycle” cannot be 0% based on the claims and Specification. Thus, under the proper construction of “first duty cycle,” turning off the red LED in State 2 (Petitioner’s “first control protocol”) is not operating according to a “first duty cycle” as required by claims 1 and 11. Ex. 2002 ¶ 66.” slip op. at 28
Patent outcomesUS 10,433,776 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,433,776 - Apple Inc. v. Masimo CorporationNo claims unpatentablePTAB · Apr 11, 2022 · IPR2020-01523 · APJ Josiah C Cocks · IPR · Final written decision
Apple did not prove claims 1–7, 9–18, and 20–24 unpatentable; the asserted obviousness grounds failed to establish the claimed power reduction or the required light detector-derived processing characteristics.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“In our view, Patent Owner has the better explanation for what a person of ordinary skill in the art would understand from the ’703 patent as to what constitutes the “processing characteristics” that factor into the patient monitoring described by the claims. In that respect, we agree with Patent Owner’s above-noted assessments of the requirements of claims 4 and 8. Patent Owner persuasively explains that claim 4 does not emerge as meaningless based on Patent Owner’s construction of “processing characteristics” but instead claim 4 further refines the understanding of the type of processing characteristics that are received from the light detectors, i.e., signal characteristics rather than physiological measurements. We also share Patent Owner’s view that the understanding of claim 8 taken in the context of the Specification (e.g., Fig. 4), establishes that the estimate of power consumption is determined based on signals from light detector 490. We agree that Petitioner’s views as to how claims 4 and 8 inform the meaning of “processing characteristics” lack support and fall short. We conclude that it is inconsistent with the ’703 patent to tease out the sweeping premise advanced by Petitioner that simply any information that is processed, regardless of its source, can constitute the “processing characteristics” that are employed as a part of all of the challenged claims to monitor a patient based on light signals. Rather, we rely on the written description of the ’703 patent as a useful guide in informing the meaning of “processing characteristics,” and conclude that the proper understanding of the term is that such characteristics are derived from signals from light detectors. See Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (“It is therefore entirely appropriate for a court, when conducting claim construction, to rely heavily on the written description for guidance as to the meaning of the claims.”). Accordingly, we conclude that, in the context of the ’703 patent, “processing characteristics” are determined from a signal received from one or more detectors configured to detect light.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“2. Other Claim Terms Upon consideration of the entirety of the arguments and evidence presented, we conclude no further explicit construction of any claim term is needed to resolve the issues presented by the arguments and evidence of record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “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 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not offer its own assessment of the level of ordinary skill. Patent Owner, however, does level a measure of criticism of Petitioner’s assessment of the level of skill in the art as being inconsistent with Petitioner’s own declarant, Dr. Anthony, in not accounting for experience in “non-invasive optical biosensors.” PO Resp. 16–17. Nevertheless, Patent Owner expresses that it “applies the asserted level of skill identified in the Petition.” Id. at 17 (citing Ex. 2001 ¶ 22). We determine that the Petitioner’s expressed level of ordinary skill in the art is consistent with the ’703 patent and the prior art of record. Accordingly, we adopt it in this Decision.” slip op. at 16
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“We are not persuaded by Petitioner’s view that suspending Diab’s motion artifact suppression module necessarily will result in reduced power consumption. Although Amano does describe that its particular system enjoys reduced power consumption when its body movement component eliminating section 30 is suspended (Ex. 1004, 21:65–22:6), Patent Owner presents plausible reasoning and evidence that such power reduction may not occur in Diab’s differently structured and configured system. As between the conflicting testimony of Dr. Anthony and Dr. Madisetti on this matter, we find more credible the testimony of Dr. Madisetti in explaining why the same power consumption reduction attributed in Amano may not occur in Diab’s differently structured system. See, e.g., Ex. 2001 ¶¶ 76–77, 87–90. Yet, the premise of supposed power reduction is the foundational reason that Petitioner advances in combining the teachings of Amano with Diab. We conclude that Petitioner has not met its burden of persuasion on this issue. See Dynamic Drinkware, 800 F.3d at 1378.” slip op. at 31
Patent outcomesUS 8,457,703 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,457,703
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.