- Fusion Orthopedics, LLC v. Extremity Medical, LLCSome claims unpatentablePTAB · Nov 4, 2024 · IPR2023-00894 · APJ Robert A Pollock · IPR · Final written decision
Claims 1–10 and 12–15 are unpatentable; claim 11 was not shown unpatentable. Substitute claims 16–25 and 27–30 are unpatentable over Mazur; claim 26 was not reached.
RulingsFinal written decision- BurdenMixed
“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)). Here, however, not until its Reply does Petitioner belatedly suggest that Ferrante’s disclosure of bone screws with self-tapping ends equally meets the limitation of claim 10 (with respect to the first member) as with claim 11 (with respect to the second member), and that both claims are obvious in light of “evidence” from Ferrante “that it was well known to equip bone screws with self-tapping ends.” Reply 26–27. We do not discern these arguments in the Petition, and consider them waived. See Netflix, Inc. v. DivX, LLC, 84 F.4th 1371,1377 (Fed. Cir. 2023) (“While the Board should not take an overly mechanistic view of a petition and decline to address an argument because the petitioner did not present it with ideal vigor and clarity, the Board should also not have to decode a petition to locate additional arguments beyond the ones clearly made.”). In sum, Petitioner’s error in failing to first address limitations of claim 10 in the Petition specific to the Cognet/Ferrante combination indicates a failure to meet the particularity requirements for what must be in the petition and cannot be left to be filled in on reply. See 35 U.S.C. § 312(a)(3); 37 C.F.R. §§ 42.22(a)(2) (requiring, among other things, “a detailed explanation of the significance of the evidence”), 42.104(b)(4)–(5) (requiring that petition “specify where each element of the claim is found in the prior art patents or printed publication relied upon” and, regarding submitted evidence, state “the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge”). Microsoft, 2022 WL 989403, at *6. Accordingly, Petitioner has not shown persuasively that claim 11 would have been obvious in light of Cognet and Ferrante for the reasons set forth in the Petition. slip op. at 41
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We also find persuasive Mr. Dominguez’s explanation that one of ordinary skill in the art would have understood “bore” as including stepped diameter holes, sometimes described as a bore having a counterbore. See generally Ex. 1018 ¶¶ 4–29; Reply 3–10. Three of Mr. Dominguez’s illustrative examples are reproduced in the annotated figures below. The above figures show Mr. Dominguez’s annotated illustrations from the Jackson (Ex. 1019, Fig. 3), Brånemark (Ex. 1021, Fig. 4), and Ray (Ex. 1025, Fig. 1) references as discussed at paragraphs 10, 12, and 13, respectively, of Mr. Dominguez’s Second Declaration. With reference to the above figures, Mr. Dominguez testifies that “Jackson describes a bone repair set screw in which ‘[t]he bore 27 comprises a first bore section 31, a second bore section 32,’ etc. delineated by shoulders 41, 42, etc. (Ex. 1019, 5:24– 43)” (Ex. 1018 ¶ 10); “Brånemark describes an osseous implantation device having body 1ʺ with first and second holding portions 21ʺ, 31ʺ and ‘an inner through bore with a first portion 4ʺ in the first holding portion and a second portion 5ʺ in the second holding portion.’” Ex. 1021, 4:44–46” (id. ¶ 12); and Ray discloses surgical calipers including “handle 12 having ‘stepped cylindrical bore 14,’” wherein “[c]ollar 20 of a shaft inserted in the bore ‘rests against a step of the bore 14’ (2:14–15)” (id. ¶ 13). Patent Owner responds that Mr. Dominguez’s examples “that allegedly show a single bore encompassing two or more stepped-diameter holes or a counterbore . . . . are specific to these references and divorced from the disclosures of the ’166 patent.” Sur-Reply 7. Insofar as the ’166 patent makes no mention of the term “bore” outside the claims, and Mr. Dominguez’s examples are all taken from the field of orthopedic surgery, we do not find this argument persuasive. Patent Owner further appears to contend that exemplary references to a “cylindrical stepped down bore” or a “stepped cylindrical bore” are too specific to be within the scope of the term “bore.” Sur-Reply 7–8. As these terms merely describe species within a larger genus, and Patent Owner presents no cogent reason to exclude them, we do not find this argument availing. Relatedly, we are also not persuaded by Patent Owner’s argument that “the prior art treats a ‘bore’ as an element that is distinct from a ‘counterbore.’” Id. at 8. Rather, we credit Mr. Dominguez’s testimony that “[a] counterbore is not a structure unto itself, a counterbore is part of a larger structure” as exemplified by numerous examples including Laps (Ex. 1028 ¶ 33 (sensor assembly wherein “bore 16 includes a counterbore 18”)); Martinez (Ex. 1029, 3:61 (surgical cutting instrument wherein “bore 56 has a counterbore 64”)); Zang (Ex. 1030, 2:49 (bone anchor having a “bore [that] includes a counterbore”)); Ledet (Ex. 1022, 29:3–5 (vertebral fixation plate having “through holes . . . . countersunk, or counterbored to accommodate the head of a bone screw”)); Seo (Ex. 1031, 3:45 (chair leg employing “counterbored bore 23”)); and Exner (Ex. 1032, 2:16 (extrusion press including “counterbored axial bore 6”)). Ex. 1018 ¶¶ 17–23. That a reference may refer to a figure as showing “bore 103” with “counterbore 105 . . . formed on one end” does not indicate that they are distinct structures as Patent Owner contends, but merely that the focus of each term is directed to the entire bore or to a particular aspect of the bore, i.e., its counterbore. See” slip op. at 22
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner subsequently proposed an alternative definition, as a person having “[a] Bachelor’s Degree in biomedical and/or mechanical engineering or similar training and . . . at least three years of experience with implant devices used for internal fixation of bones.” POR 5 (citing Ex. 2012 ¶¶ 32–33). According to Patent Owner, “[t]his hypothetical person would be capable of performing various design tasks and would understand the basic mechanical features and operation of orthopaedic implant devices [and] have an appreciation for orthopaedic fusion techniques and the medical issues and concerns faced by a doctor/surgeon charged when performing operations to implant orthopaedic devices.” Id. Despite some differences in wording, Patent Owner asserts (and Petitioner does not contest) that any “distinction between the parties’ proposed definitions of a POSITA does not affect the arguments set forth herein.” Id. (citing Ex. 2012 ¶ 34). Consistent with this view, we find the parties’ constructions equally applicable in light of the prior art of record and the disclosure of the ’166 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). We adopt, for convenience, Petitioner’s definition, but our analysis does not change depending on which of the two articulations are applied here. H.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“one of ordinary skill in the art would understand that “bore,” as used in the context of claims 1 and 12, encompasses a multi-diameter passage, and in particular, one having stepped longitudinal cross sections such as that shown in Cognet’s Figure 1. See generally DI 11–13. For the reasons that follow, we conclude that one of ordinary skill in the art would have understood “bore” as such. Relying on the testimony of Mr. Dominguez, Petitioner initially proposed a construction of “bore” as “a usually cylindrical hole made by or as if by the turning or twisting movement of a tool.” Pet. 16 (citing Ex. 1002 ¶ 58). Petitioner’s proposal relied on Mr. Dominguez’s testimony that “[a] bore is a cylindrical hole made by the spinning rotation of a twist drill cutting tool. It is typically made by removing material from a solid or hollow object, similar to a tunnel or orifice.” Ex. 1002 ¶ 58. Pointing to its annotation of Cognet’s Figure 1, above, Patent Owner argued that that the term “bore” excludes a tunnel made by “two adjacent bores.” See Prelim. Resp. 21–25. In view of the then-available evidence, we provisionally construed “bore” as a hole or passage made by or as if by the turning or twisting movement of a tool such that its interior walls have cylindrical lateral cross-sections, and which do not exclude holes or passages having tapered or stepped longitudinal cross-sections. DI 13.” slip op. at 19
Patent outcomesUS 11,298,166 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,298,166 - Dr. Reddy’S Laboratories, Inc. v. Genentech, Inc., Hoffman-La Roche AG, And Abbvie Inc.Some claims unpatentablePTAB · Jul 5, 2023 · PGR2022-00023 · APJ Robert A Pollock · PGR · Final written decision
The Board held claims 2, 3, 5, 14, 26, 27, and 30 unpatentable for lack of written description, but did not find claims 1, 6, and 25 unpatentable.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“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 and cancer biology, which would encompass the blood cancers recited by Patent Owner. 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))). We find that Dr. Gordon and Dr. Sharman are both qualified to opine from the perspective of a skilled artisan as both are persons of at least ordinary skill in the art, based on either party’s definition. Ex. 1020, ¶¶ 8– 19; Ex. 2008, ¶¶ 11–24.” slip op. at 7
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“We find Dr. Sharman’s statements and deposition testimony have substantially greater credibility than Dr. Gordon’s statements and deposition testimony based on Dr. Sharman’s significantly greater relevant experience in treatment and study of hematological cancers using chemotherapeutic agents and based on Dr. Sharman’s superior recollection and more complete analysis of the record found in the ’942 patent. In particular, we found Dr. Gordon’s statement that no example “includes” every element of claim 1 factually incorrect as contradicted by at least Figure 2 of the ’942 patent where the ordinary understanding of includes to mean encompasses is used. See Ex. 1020 ¶ 131. Ebit Sys. Am., LLC v. Thales Visonix, Inc., 881 F.3d 1354, 1358 (Fed. Cir. 2018) (“The PTAB [i]s entitled to weigh the credibility of the witnesses ....”).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“The parties do not identify any issue relating to the preamble that needs to be addressed to resolve the sole written description challenge and the parties do not dispute that the transitional term “comprising” is “inclusive or open-ended and does not exclude additional, unrecited elements or method steps.” Georgia-Pacific Corp. v. US. Gypsum Co., 195 F.3d 1322, 1327 (Fed. Cir. 1999). We therefore find that there are no terms that need claim construction. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateWritten description inadequateMixed
“We find that Figure 2 of the ’942 patent and the associated example provide literal and express descriptive support for claim 1 of the ’942 patent. As descriptive support for claim 1, the ’942 patent teaches treatment of leukemia or lymphoma, including chronic lymphocytic leukemia and small lymphocytic lymphoma (Ex. 1001, 16:21–22), by orally administering the Bcl-2 inhibitor GDC-0199 (Ex. 1001, 17:16) in escalating doses of 50 mg per day during a first week and 100 mg per day during a second week (Ex. 1001, Figure 2). Claim 1 of the ’942 patent, as written, does not exclude performance of the complete combination therapy shown in Figure 2. Rather, the reasonable understanding of the term “comprising” in claim 1 encompasses monotherapy with GDC-0199 alone and combination therapy with obinutuzumab. Both embodiments are described in the Specification. As Patent Owner points out, the ’942 Specification is replete with disclosures to administer GDC-0199 by itself to a patient, stating” slip op. at 16
Patent outcomesUS 10,993,942 mixedClaim construction§ 112 disclosurePatents in suitUS 10,993,942 - Pelican Biothermal, LLC v. Va-Q-Tec AGSome claims unpatentablePTAB · Jun 16, 2023 · PGR2021-00085 · APJ Barry L Grossman · PGR · Final written decision
The Board granted the motion to amend but held amended claim 64 unpatentable as anticipated by NanoCool 98596-type products and obvious over the cited combinations; all other amended claims were not shown unpatentable.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“VI. ORDER In consideration of the foregoing, it is hereby: ORDERED that Petitioner has demonstrated by a preponderance of the evidence that amended claim 64 is unpatentable; FURTHER ORDERED that Patent Owner’s Non-Contingent Motion to Amend is granted for claims 64 and denied for all other amended claims; and” slip op. at 77
- ExcludeMotion to exclude, deniedDenied
“A. Status as Prior Art Is a Substantive Issue, Not an Evidentiary Issue. A motion to exclude is not an appropriate mechanism for challenging the sufficiency of evidence, such as whether a reference qualifies as prior art, or the proper weight that should be afforded an argument. See Flir Systems, Inc. v. Leak Surveys, Inc., IPR2014-00411, Paper 113, 4, 8–9 (PTAB September 3, 2015); PTAB Consol. Trial Practice Guide 79 (Nov. 30 Mr. Zumwalt testifies that other NanoCool products, designated by product number 85430 and 98630, also have the same configuration as the 98830 product and are made by the same process. Thus, “the 98830, 85430, and 98630 products can be collectively referred to as ‘98830-type’ products all having the same relevant design.” Ex. 1030 ¶ 17. 2019) (“A motion to exclude . . . may not be used to challenge the sufficiency of the evidence to prove a particular fact. A motion to exclude is not a vehicle for addressing the weight to be given evidence—arguments regarding weight should appear only in the merits documents.”); Caterpillar Inc. v. Wirtgen Am., Inc., IPR2017-02187, Paper 42,17 (PTAB May 21, 2019) (status as prior art “is a substantive issue, not an evidentiary issue.”) Thus, whether the NanoCool 98830 product is prior art is not the proper basis for Patent Owner’s Motion to Exclude evidence concerning the NanoCool 98830 product.” slip op. at 29
- Skill levelSkill level board ownOther
“Neither Petitioner nor Mr. Harber provide any analysis of the factors pertinent to a determination of the level of ordinary skill, identified above, to support their conclusory statements. We give Mr. Harber’s conclusory testimony minimal probative weight. 37 C.F.R. § 42.64(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.”). Moreover, there is no persuasive evidence to which we have been directed of the need for specific education or experience in biological or chemical technologies related to the claimed containers and inserts.” slip op. at 26
- Expert testimonyPetitioner expert discountedDecided for patent owner
“With regard to the level of ordinary skill in the art, Petitioner asserts that a person of ordinary skill would have had “a bachelor’s degree or higher degree in biological, chemical or mechanical engineering, or related sciences, and at least two to five years of experience in designing and testing ISCs [insulated shipping containers] depending on education level.” Pet. 9 (emphasis added) (citing Ex. 1002 ¶¶ 23–24). Exhibit 1002 is the Declaration testimony of Mr. Paul Haber. Mr. Harber actually states a slightly different level of ordinary skill. Mr. Harber testifies: The hypothetical POSITA would have: (i) at least a bachelor’s degree in biological, chemical or mechanical engineering, or related sciences, and have at least three to five years of experience in designing and testing ISCs [Insulated Shipping Containers][29]. Such a person may also have (ii) a higher level degree, such as a PhD and/or Master’s degree in engineering, or related sciences, and have at least two to three years of experience in designing and testing ISCs. 29 See Ex. 1002 ¶ 23. Ex. 1002 ¶ 24 (emphasis added). Mr. Harber also testifies that “[t]hese descriptions are approximate, and a higher level of education or specific skill might make up for less experience, and vice-versa.” Id.” slip op. at 25
Patent outcomesUS 10,766,685 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,766,685 - Amphastar Pharmaceuticals, Inc. v. Aegis Therapeutics, LLCSome claims unpatentablePTAB · Feb 9, 2023 · IPR2021-01324 · APJ Cynthia M Hardman · IPR · Final written decision
Claims 1, 2, and 7–17 are unpatentable under §102 or §103; claims 3–6 and 18–20 were not shown unpatentable.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedDecided for patent owner
“in Table 1 and the formulations of Potta claim 21 (i.e., ‘from about 0.1% w/w to about 15% w/w epinephrine or a salt thereof’), because such formulations would elicit the desired biological or medicinal response.” Ex. 1002 ¶ 272. Dr. Weinstein provides an essentially identical opinion. Ex. 1003 ¶ 286. Neither declarant supports their opinion with any explanation as to why the Potta formulations would provide the claimed plasma epinephrine concentration or elicit a biological or medicinal response. Accordingly, we do not credit these opinions, and determine that Petitioner has not met its burden to establish that Potta inherently anticipates claim 3. See n re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”).” slip op. at 29
- ExcludeMotion to exclude, deniedDenied
“As the moving party, Petitioner bears the burden of establishing that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). Having considered the arguments and evidence of record, we determine that Petitioner has not met its burden of proof. We agree with Patent Owner that “[n]o bright line rule prohibits the consideration of post-priority date evidence,” and that such evidence is permissible in certain contexts. Opp. 2–3. On this record we do not find that there is sufficient cause to exclude the challenged exhibits, because any consideration by the Board of these exhibits has taken into account their alleged post-priority date status. Thus, we do not find that maintaining the exhibits in this proceeding results in any unfair prejudice to Petitioner, or that the exhibits have confused the issues before us. Accordingly, we deny Petitioner’s motion to exclude.” slip op. at 73
- Skill levelOther
“II. ANALYSIS A. Level of Ordinary Skill in the Art We consider the grounds of unpatentability in view of the” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“For the above reasons, on the full trial record we determine that” slip op. at 26
Patent outcomesUS 10,682,414 mixed§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,682,414 - Apple, Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentablePTAB · Nov 30, 2022 · IPR2022-00359 · APJ Brent M Dougal · IPR · Final written decision
Claims 1–10, 12, and 14–31 are unpatentable as obvious; claims 11 and 13 were not shown unpatentable because Numazaki does not teach or suggest their transmission and cellular-phone limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We apply these principles to the Petition’s challenges. 2. Level of Ordinary Skill in the Art Petitioner asserts that “[a] person having ordinary skill in the art (‘PHOSITA’) at the time of the ’431 Patent would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 3 (citing Ex. 1008 ¶¶ 30–32). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. PO Resp. 6. We are persuaded, on the present record, that Petitioner’s declarant’s statement is consistent with the problems and solutions in the ’431 patent and prior art of record. We adopt this definition for the purposes of this Decision.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Patent Owner argues that the preambles should be limiting because they recite essential structure or steps and are “necessary to give life, meaning, and vitality” to the claims. PO Resp. 6 (quoting Acceleration Bay, LLC v. Activision Blizzard, Inc., 908 F.3d 765, 770 (Fed. Cir. 2018)). Specifically, Patent Owner asserts that each claim includes one or more limitations that refer back to the preamble’s “handheld computing device” or “handheld computer apparatus” for antecedent basis. Id. at 6–7. Patent Owner further argues that the ’431 patent discloses different embodiments, with some embodiments being in the form of a computer and some embodiments being in the form of a handheld device. Id. at 7 (citing Ex. 1001, 12:59–13:7, Fig. 10A). Patent Owner contends that the claims are directed to the latter embodiments related to a handheld device and, therefore, “the preamble is necessary to give life, meaning, and vitality to claims 1, 7, and 14, consistent with the embodiments that the inventor chose to claim.” Id. We agree that the preambles of claims 1, 7, and 14 are limiting. This is primarily because the body of each claim includes “said device” or “said apparatus” which refers back to the preamble and is understood with reference thereto. For example, the last clause of claim 7 states: “means for controlling a function of said apparatus using said information.” Ex. 1001, 26:4–5 (emphasis added). “Said apparatus” derives antecedent basis from the “[h]andheld computer apparatus” recited in the preamble. Moreover, the “means for controlling a function of said apparatus” is understood because of this reference to the handheld computer apparatus. The limitations of claims 1 and 14 are similar and so this logic applies equally to these claims as well. Thus, we agree that the preamble recites essential structure and is “necessary to give life, meaning, and vitality” to claims 1, 7, and 14.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“b) Camera Means Petitioner asserts that, though claim 7 recites “camera means,” it is not a means-plus-function limitation under §112 ¶ 6. Pet. 6. Petitioner argues that “a PHOSITA would have considered ‘camera means associated with said housing’ to have a sufficiently definite meaning as the name for structure.” Id. (citing Ex. 1008 ¶ 36). Petitioner further argues that “all optical sensors obtain images by capturing light, so the claimed function is simply describing the general process that all optical sensors employ to obtain images of objects.” Id. (citing Ex. 1008 ¶ 36). “Patent Owner agrees” with Petitioner’s construction PO. Resp. 7. We accept Petitioner’s construction as consistent with the current record.” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner
“c) Computer Means Petitioner contends that claim 7’s limitation of “computer means within said housing for analyzing said image to determine information concerning a position or movement of said object” is a means-plus-function limitation under §112 ¶ 6. Pet. 7. Petitioner argues that the limitation’s function is analyzing an image “to determine positioning or movement of an object.” Id. Petitioner argues that the corresponding structure “includes a computer/processor programmed (1) to identify either natural or artificial features on an object as described . . . or (2) to track the movement using one of the disclosed methods.” Id. at 9; see id. at 8–9 (discussing the disclosure of the ’431 patent) (citing Ex. 1001, 3:38–47, 3:57–62, 4:9–14, 5:2–23, 6:64–7:13, 8:40–59, 11:16–35). Petitioner also argues that “objects” should be construed to mean “both separate objects held/controlled by the user and also part of the user’s body, such as a user’s finger or hand.” Id. at 8; see id. at 7–8 (citing Ex. 1001, 3:39–41, 3:48–50, claims 7–8). “Patent Owner does not contest” Petitioner’s construction. PO Resp. 6. We accept Petitioner’s construction as consistent with the current record.10 d) Means for Controlling a Function Petitioner argues that claim 7’s limitation of “means for controlling a function of said apparatus using said information” is a means-plus-function” slip op. at 10
Patent outcomesUS 7,933,431 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,933,431 - Apple, Inc., LG Electronics, Inc., LG Electronics U.S.A., Inc., And Google LLC v. Gesture Technology Partners, LLCSome claims unpatentablePTAB · Nov 30, 2022 · IPR2022-00091 · APJ Brent M Dougal · IPR · Final written decision
Claims 1–10, 12, and 14–31 are unpatentable as obvious; claims 11 and 13 were not shown unpatentable because Numazaki did not teach or suggest their cellular phone or transceiver limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We apply these principles to the Petition’s challenges. 2. Level of Ordinary Skill in the Art Petitioner asserts that “[a] person having ordinary skill in the art (‘PHOSITA’) at the time of the ’431 Patent would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 3 (citing Ex. 1008 ¶¶ 30–32). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. PO Resp. 6. We are persuaded, on the present record, that Petitioner’s declarant’s statement is consistent with the problems and solutions in the ’431 patent and prior art of record. We adopt this definition for the purposes of this Decision.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Patent Owner argues that the preambles should be limiting because they recite essential structure or steps and are “necessary to give life, meaning, and vitality” to the claims. PO Resp. 6 (quoting Acceleration Bay, LLC v. Activision Blizzard, Inc., 908 F.3d 765, 770 (Fed. Cir. 2018)). Specifically, Patent Owner asserts that each claim includes one or more limitations that refer back to the preamble’s “handheld computing device” or “handheld computer apparatus” for antecedent basis. Id. at 6–7. Patent Owner further argues that the ’431 patent discloses different embodiments, with some embodiments being in the form of a computer and some embodiments being in the form of a handheld device. Id. at 7 (citing Ex. 1001, 12:59–13:7, Fig. 10A). Patent Owner contends that the claims are directed to the latter embodiments related to a handheld device and, therefore, “the preamble is necessary to give life, meaning, and vitality to claims 1, 7, and 14, consistent with the embodiments that the inventor chose to claim.” Id. We agree that the preambles of claims 1, 7, and 14 are limiting. This is primarily because the body of each claim includes “said device” or “said apparatus” which refers back to the preamble and is understood with reference thereto. For example, the last clause of claim 7 states: “means for controlling a function of said apparatus using said information.” Ex. 1001, 26:4–5 (emphasis added). “Said apparatus” derives antecedent basis from the “[h]andheld computer apparatus” recited in the preamble. Moreover, the “means for controlling a function of said apparatus” is understood because of this reference to the handheld computer apparatus. The limitations of claims 1 and 14 are similar and so this logic applies equally to these claims as well. Thus, we agree that the preamble recites essential structure and is “necessary to give life, meaning, and vitality” to claims 1, 7, and 14.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Term construed petitioner construction§112(f) does not applyDecided for petitioner
“b) Camera Means Petitioner asserts that, though claim 7 recites “camera means,” it is not a means-plus-function limitation under §112 ¶ 6. Pet. 6. Petitioner argues that “a PHOSITA would have considered ‘camera means associated with said housing’ to have a sufficiently definite meaning as the name for structure.” Id. (citing Ex. 1008 ¶ 36). Petitioner further argues that “all optical sensors obtain images by capturing light, so the claimed function is simply describing the general process that all optical sensors employ to obtain images of objects.” Id. (citing Ex. 1008 ¶ 36). “Patent Owner agrees” with Petitioner’s construction PO. Resp. 7. We accept Petitioner’s construction as consistent with the current record.” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed petitioner construction§112(f) appliesDecided for petitioner
“c) Computer Means Petitioner contends that claim 7’s limitation of “computer means within said housing for analyzing said image to determine information concerning a position or movement of said object” is a means-plus-function limitation under §112 ¶ 6. Pet. 7. Petitioner argues that the limitation’s function is analyzing an image “to determine positioning or movement of an object.” Id. Petitioner argues that the corresponding structure “includes a computer/processor programmed (1) to identify either natural or artificial features on an object as described . . . or (2) to track the movement using one of the disclosed methods.” Id. at 9; see id. at 8–9 (discussing the disclosure of the ’431 patent) (citing Ex. 1001, 3:38–47, 3:57–62, 4:9–14, 5:2–23, 6:64–7:13, 8:40–59, 11:16–35). Petitioner also argues that “objects” should be construed to mean “both separate objects held/controlled by the user and also part of the user’s body, such as a user’s finger or hand.” Id. at 8; see id. at 7–8 (citing Ex. 1001, 3:39–41, 3:48–50, claims 7–8). “Patent Owner does not contest” Petitioner’s construction. PO Resp. 6. We accept Petitioner’s construction as consistent with the current record.10 d) Means for Controlling a Function Petitioner argues that claim 7’s limitation of “means for controlling a function of said apparatus using said information” is a means-plus-function” slip op. at 10
Patent outcomesUS 7,933,431 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,933,431 - Apple, Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentablePTAB · Nov 30, 2022 · IPR2021-00920 · APJ Brent M Dougal · IPR · Final written decision
Claims 1–10, 12, and 14–31 are unpatentable as obvious; claims 11 and 13 were not shown unpatentable because Numazaki does not teach or suggest their limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“(‘PHOSITA’) at the time of the ’431 Patent would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 3 (citing Ex. 1008 ¶¶ 30–32). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. PO Resp. 6. We are persuaded, on the present record, that Petitioner’s declarant’s statement is consistent with the problems and solutions in the ’431 patent and prior art of record. We adopt this definition for the purposes of this Decision.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“they recite essential structure or steps and are “necessary to give life, meaning, and vitality” to the claims. PO Resp. 6 (quoting Acceleration Bay, LLC v. Activision Blizzard, Inc., 908 F.3d 765, 770 (Fed. Cir. 2018)). Specifically, Patent Owner asserts that each claim includes one or more limitations that refer back to the preamble’s “handheld computing device” or “handheld computer apparatus” for antecedent basis. Id. at 6–7. Patent Owner further argues that the ’431 patent discloses different embodiments, with some embodiments being in the form of a computer and some embodiments being in the form of a handheld device. Id. at 7 (citing Ex. 1001, 12:59–13:7, Fig. 10A). Patent Owner contends that the claims are directed to the latter embodiments related to a handheld device and, therefore, “the preamble is necessary to give life, meaning, and vitality to claims 1, 7, and 14, consistent with the embodiments that the inventor chose to claim.” Id. We agree that the preambles of claims 1, 7, and 14 are limiting. This is primarily because the body of each claim includes “said device” or “said apparatus” which refers back to the preamble and is understood with reference thereto. For example, the last clause of claim 7 states: “means for controlling a function of said apparatus using said information.” Ex. 1001, 26:4–5 (emphasis added). “Said apparatus” derives antecedent basis from the “[h]andheld computer apparatus” recited in the preamble. Moreover, the “means for controlling a function of said apparatus” is understood because of this reference to the handheld computer apparatus. The limitations of claims 1 and 14 are similar and so this logic applies equally to these claims as well. Thus, we agree that the preamble recites essential structure and is “necessary to give life, meaning, and vitality” to claims 1, 7, and 14.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“b) Camera Means Petitioner asserts that, though claim 7 recites “camera means,” it is not a means-plus-function limitation under §112 ¶ 6. Pet. 6. Petitioner argues that “a PHOSITA would have considered ‘camera means associated with said housing’ to have a sufficiently definite meaning as the name for structure.” Id. (citing Ex. 1008 ¶ 36). Petitioner further argues that “all optical sensors obtain images by capturing light, so the claimed function is simply describing the general process that all optical sensors employ to obtain images of objects.” Id. (citing Ex. 1008 ¶ 36). “Patent Owner agrees” with Petitioner’s construction PO. Resp. 7. We accept Petitioner’s construction as consistent with the current record.” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner
“c) Computer Means Petitioner contends that claim 7’s limitation of “computer means within said housing for analyzing said image to determine information concerning a position or movement of said object” is a means-plus-function limitation under §112 ¶ 6. Pet. 7. Petitioner argues that the limitation’s function is analyzing an image “to determine positioning or movement of an object.” Id. Petitioner argues that the corresponding structure “includes a computer/processor programmed (1) to identify either natural or artificial features on an object as described . . . or (2) to track the movement using one of the disclosed methods.” Id. at 9; see id. at 8–9 (discussing the disclosure of the ’431 patent) (citing Ex. 1001, 3:38–47, 3:57–62, 4:9–14, 5:2–23, 6:64–7:13, 8:40–59, 11:16–35). Petitioner also argues that “objects” should be construed to mean “both separate objects held/controlled by the user and also part of the user’s body, such as a user’s finger or hand.” Id. at 8; see id. at 7–8 (citing Ex. 1001, 3:39–41, 3:48–50, claims 7–8). “Patent Owner does not contest” Petitioner’s construction. PO Resp. 6. We accept Petitioner’s construction as consistent with the current record.10 d) Means for Controlling a Function Petitioner argues that claim 7’s limitation of “means for controlling a function of said apparatus using said information” is a means-plus-function 10 In related IPR2021-00917 the petitioner there offered a slightly different construction. See IPR2021-00917, Paper 31, 11–12. The parties do not address the slight differences and we determine that the outcome here is not construction dependent. limitation under §112 ¶ 6. Pet. 10. According to Petitioner, the limitation’s function is “controlling a function of the apparatus using information about the object’s location or movement.” Id. Petitioner argues that the corresponding structure “is a processor programmed to perform the specific algorithms that accomplish this function” which “includes at least [the] Fig. 9 disclosure.” Id. at 10–11. “Patent Owner does not contest” Petitioner’s construction. PO Resp. 6. However, as discussed above, we determine that “said apparatus” refers to the handheld computer apparatus in the preamble. Thus, we accept Petitioner’s construction with the added requirement that the general purpose computer be a handheld computer apparatus. e) Means for Transmitting Information Petitioner asserts that claim 11’s limitation of “means for transmitting information” is a means-plus-function limitation under §112 ¶ 6. Pet. 11. Petitioner argues that the ’431 patent teaches the structure for performing the limitation’s function of “transmitting information” is a “wireless cellular transceiver” and thus the corresponding structure required by the claim “includes at least a wireless cellular transceiver.” Id. at 11–12 (citing Ex. 1001, 12:59–13:3). “Patent Owner does not contest” Petitioner’s construction. PO Resp. 6. We accept Petitioner’s construction as consistent with the current record.11” slip op. at 10
Patent outcomesUS 7,933,431 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,933,431 - Apple, Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentablePTAB · Nov 28, 2022 · IPR2022-00360 · APJ Brent M Dougal · IPR · Final written decision
Claims 1–6, 8–16, 18–26, and 28–30 are unpatentable as obvious; claims 7, 17, and 27 were not shown unpatentable because Numazaki teaches away from using ring or other targets.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“2. Level of Ordinary Skill in the Art Petitioner asserts that “[a] person having ordinary skill in the art (‘PHOSITA’) at the time of the ’079 Patent would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 4 (citing Ex. 1010 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. PO Resp. 6. We are persuaded that Petitioner’s declarant’s statement is consistent with the problems and solutions in the ’079 patent and prior art of record. We adopt this definition for the purposes of this Final Decision.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“the light source is used is not a sufficient reason for us to read a limitation into the claims from the Specification. If the specification “reveal[s] a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess[,] . . . the inventor’s lexicography governs.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)); see also Reply 19. However, this is not the case here. Patent Owner does not identify anywhere in the Specification where “light source” or “plurality of light emitting diodes” are defined as “the light source illuminates the gesture by having two or more (i.e., a plurality) LEDs of the light source emit light at the same time.” For these reasons we decline to adopt Patent Owner’s claim construction. We determine that the added limitation in claims 3, 15, and 23 should be read according to its plain and ordinary meaning. In other words, “the light source includes a plurality of light emitting diodes,” simply means exactly what it says “the light source includes a plurality of light emitting diodes.”” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundNot shown unpatentableMixed
“A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. The degree of teaching away will of course depend on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“Petitioner argues that Numazaki ’863 teaches using a plurality of light emitting diodes to illuminate a hand gesture and to control a computer based on the gesture. Pet. 37. Petitioner also identifies a number of reasons to modify Numazaki’s light source to use Numazaki’s ’863’s plurality of light emitting diodes as the light sources are used for similar purposes. Id. at 38– 39. Patent Owner does not contest Petitioner’s positions in the Petition, other than to argue that the combination does not teach the claim limitation under Patent Owner’s construction. PO Resp. 20–22. Patent Owner further admits that Numazaki ’863 teaches a plurality of light emitting diodes used to illuminate an object. Id. at 21 (citing Ex. 1005, 16:36–57, Fig. 4). As we previously rejected Patent Owner’s attempt to read limitations from the Specification into the claims, Patent Owner’s arguments here do not apply to the requirements of the claims. We have reviewed Petitioner’s assertions with respect to these claims and the supporting evidence, and determine that Petitioner has established by a preponderance of the evidence that claims 3, 15, and 23 are unpatentable.” slip op. at 24
Patent outcomesUS 8,553,079 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,553,079 - Apple, Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentablePTAB · Nov 28, 2022 · IPR2022-00090 · APJ Brent M Dougal · IPR · Final written decision
Claims 1–6, 8–16, 18–26, and 28–30 are unpatentable as obvious; claims 7, 17, and 27 were not shown unpatentable because Numazaki teaches away from using targets.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“The mere fact that the Specification provides an example as to how the light source is used is not a sufficient reason for us to read a limitation into the claims from the Specification. If the specification “reveal[s] a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess[,] . . . the inventor’s lexicography governs.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)); see also Reply 19. However, this is not the case here. Patent Owner does not identify anywhere in the Specification where “light source” or “plurality of light emitting diodes” are defined as “the light source illuminates the gesture by having two or more (i.e., a plurality) LEDs of the light source emit light at the same time.” For these reasons we decline to adopt Patent Owner’s claim construction. We determine that the added limitation in claims 3, 15, and 23 should be read according to its plain and ordinary meaning. In other words, “the light source includes a plurality of light emitting diodes,” simply means exactly what it says “the light source includes a plurality of light emitting diodes.”” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“2. Level of Ordinary Skill in the Art Petitioner asserts that “[a] person having ordinary skill in the art (‘PHOSITA’) at the time of the ’079 Patent would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 4 (citing Ex. 1010 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. PO Resp. 6. We are persuaded that Petitioner’s declarant’s statement is consistent with the problems and solutions in the ’079 patent and prior art of record. We adopt this definition for the purposes of this Final Decision.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundNot shown unpatentableNot shown unpatentable
“A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. The degree of teaching away will of course depend on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Petitioner argues that Numazaki ’863 teaches using a plurality of light emitting diodes to illuminate a hand gesture and to control a computer based on the gesture. Pet. 37. Petitioner also identifies a number of reasons to modify Numazaki’s light source to use Numazaki’s ’863’s plurality of light emitting diodes as the light sources are used for similar purposes. Id. at 38– 39. Patent Owner does not contest Petitioner’s positions in the Petition, other than to argue that the combination does not teach the claim limitation under Patent Owner’s construction. PO Resp. 20–22. Patent Owner further admits that Numazaki ’863 teaches a plurality of light emitting diodes used to illuminate an object. Id. at 21 (citing Ex. 1005, 16:36–57, Fig. 4). As we previously rejected Patent Owner’s attempt to read limitations from the Specification into the claims, Patent Owner’s arguments here do not apply to the requirements of the claims. We have reviewed Petitioner’s assertions with respect to these claims and the supporting evidence, and determine that Petitioner has established by a preponderance of the evidence that claims 3, 15, and 23 are unpatentable.” slip op. at 24
Patent outcomesUS 8,553,079 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,553,079 - Apple, Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentablePTAB · Nov 28, 2022 · IPR2021-00922 · APJ Brent M Dougal · IPR · Final written decision
Claims 1–6, 8–16, 18–26, and 28–30 are unpatentable as obvious; claims 7, 17, and 27 were not shown unpatentable because Numazaki teaches away from using ring or other targets.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“(‘PHOSITA’) at the time of the ’079 Patent would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 4 (citing Ex. 1010 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. PO Resp. 6. We are persuaded that Petitioner’s declarant’s statement is consistent with the problems and solutions in the ’079 patent and prior art of record. We adopt this definition for the purposes of this Final Decision.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Claim construction starts with an analysis of the claim language itself. Sjolund v. Musland, 847 F.2d 1573, 1582 (Fed. Cir. 1988) (“[T]he claims define the invention.”). Claim 1 includes “providing a light source adapted to direct illumination through a work volume above the light source,” a “camera being fixed relative to the light source,” and “determining . . . the gesture performed in the work volume and illuminated by the light source.” Ex. 1001, 13:3–9. Claim 3 adds that “the light source includes a plurality of light emitting diodes.” Id. at 13:12–13. Reading claims 1 and 3 it can be seen that Patent Owner’s construction is not apparent or implied from the claim language. Neither claim requires, for example, that the gesture be illuminated by 100% of the light source, or by at least two LEDs of the light source. Claim 1 merely states that the gesture be “illuminated by the light source.” The amount of illumination is not specified.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundNot shown unpatentableNot shown unpatentable
“A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. The degree of teaching away will of course depend on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“The testimony of Petitioner’s declarant cannot overcome the strong “disparagement” that Petitioner admits Numazaki makes against the use of rings or other added targets. This is not a case where Numazaki merely expresses a general preference for an alternative invention, rather Numazaki clearly criticizes, discredits, and discourages the use of rings and other targets. In Petitioner’s own words, “Numazaki[’s] . . . teaching[s] . . . can obviate the need for these targets.” Tr. 28. Neither Petitioner nor Petitioner’s declarant address why one of ordinary skill in the art would have modified Numazaki to use a ring, in view of Petitioner’s admission that “Numazaki[’s] . . . teaching[s] . . . can obviate the need for these targets.” Id. Petitioner also fails to explain how the teachings of Numazaki related to specialized rings supports it conclusion related to a “small [generic] ring,” similar to what people routinely wear. Pet. 23–24. Numazaki discusses rings in specialized colors, as well as “color markers,” and “light emitting elements.” Ex. 1004, 3:7–9, 26–31. Neither Petitioner nor Petitioner’s declarant explain the logical steps between Numazaki’s disclosure and a “small [generic] ring” similar to what people routinely wear, or why one of ordinary skill in the art would have considered them to be the same or similar. For these reasons, we determine that Petitioner has not shown that” slip op. at 22
Patent outcomesUS 8,553,079 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,553,079
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.