• Lifecore Fitness, LLC D/B/A Assault Fitness v. Woodway USA, Inc.Some claims unpatentable
  PTAB · May 6, 2025 · IPR2024-00083 · APJ Meredith C Petravick · IPR · Final written decision

  Claims 1–4, 6, 7, 9–13, 15, and 16 are unpatentable as obvious over Socwell, Magid, and Sclater; claim 8 was not shown unpatentable.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “Prior to institution, Patent Owner argued that we should dismiss the Petition because it identifies the Petitioner as the California Corporation and not the Delaware Corporation. Paper 6, 23–24 (Preliminary Response); Paper 9, 1 (Preliminary Sur-Reply); Paper 12 (Conference Call Transcript); Paper 18 (Request for Director Review). In our Decision on Institution, we found Patent Owner’s argument, as applied to the facts of this proceeding, to be unpersuasive and corrected the caption to correctly reference Petitioner as the California Corporation, essentially replacing the “Inc.” with “LLC” in Petitioner’s name. Paper 13, 14–17; see also Paper 21 (Decision Denying Director Review).” slip op. at 3

  • BurdenOther

    “We find Dr. Giachetti’s testimony, alone, insufficient to establish by a preponderance of the evidence that a POSA, given Tollkien and Sclater, would have been motivated to look to one-way sprag-type clutches to solve the problem of unexpected forward motion of the running belt of a treadmill. Without a reference, like Magid, teaching that it was known to use a one-way clutch mechanism on a treadmill to prevent unexpected forward motion, we are persuaded by Patent Owner that Petitioner’s combination is impermissibly based in hindsight. See PO Resp. 42–47. After considering Petitioner’s evidence and analysis, and taking into account Patent Owner’s arguments and evidence, we determine that Petitioner has failed to show by a preponderance of the evidence that claim 1 is unpatentable over Tollkien and Sclater.” slip op. at 42

  • ExcludeMotion to exclude, deniedGranted in part

    “Declaration of Robert Giachetti, Ph.D. P.E) under FRE 401–402. Mot. 4 (citing FRE 401–402 in the heading). Patent Owner’s Motion, however, includes no substantive arguments directed to whether Giachetti Declaration is relevant admissible evidence or irrelevant inadmissible evidence. Mot. 4– 7. In its Reply, Patent Owner states: “While the Motion to Exclude does not expressly detail Exhibit 1036’s lack of relevance under FRE 401–402, the irrelevance is plain. Petitioner’s provision of new arguments in Reply, which is not allowed, renders such arguments irrelevant.” PO Reply to Mot., 1, n.1. Patent Owners argument is unpersuasive because it is a mere assertion without adequate explanation. The party moving to exclude evidence bears the burden of proving that it is entitled to the relief requested—namely, that the material sought to be excluded is inadmissible under the Federal Rules of Evidence. See 37 C.F.R. §§ 42.20(c), 42.62(a). Patent Owner’s mere assertion does not meet Patent Owner’s burden to show that Exhibit 1036 is irrelevant inadmissible evidence.” slip op. at 52

  • Strike new argumentNew argument consideredDecided for petitioner

    “8 Patent Owner argues that we should not consider Petitioner’s Reply and Exhibits 1036 and 1051 because the Reply and Exhibits relate to new arguments which should have been made in the Petition. PO Sur-Reply 4–5. We do not agree. Petitioner may rely upon Exhibits 1036 and 1051 to response to arguments raised in the Patent Owner’s Response. See PO Resp. (a ); Axonics, Inc. v. Medtronics, Inc., 75 F.4th 1374, 1380–1382 (Fed. Cir. 2023) (“we have continued to recognize that a petitioner is entitled under the APA to respond to new claim construction arguments made by a patent owner.”)” slip op. at 16

  Patent outcomesUS 11,465,005 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,465,005
• Simpson Strong-Tie Company Inc. v. Columbia Insurance CompanySome claims unpatentable
  PTAB · Mar 15, 2023 · PGR2021-00109 · APJ Stephen E Belisle · PGR · Final written decision

  Claims 1–12, 15–17, and 21–23 are unpatentable; the revised contingent motion to amend is granted for claim 32 and denied for claims 24–31, 33–35, 38–40, and 44–46.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art, at the time” slip op. at 22

  • BurdenNot shown unpatentable

    “Accordingly, based on the foregoing and the complete record before” slip op. at 38

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

    “C. Claim Construction We apply the claim construction standard articulated in Phillips v.” slip op. at 23

  • Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteMixed

    “persuaded by Petitioner that the limitations “a channel-shaped portion configured to receive the structural component” and “a base configured to receive an end portion of the structural component thereon to support the structural component” would not have informed the skilled artisan, with reasonable certainty, about the scope of the claimed invention. See Energizer Holdings, Inc. v. Int’l Trade Comm’n, 435 F.3d 1366, 1370 (Fed. Cir. 2006) (“When the meaning of the claim would reasonably be understood by persons of ordinary skill when read in light of the specification, the claim is not subject to invalidity upon departure from the protocol of ‘antecedent basis.’”). Accordingly, we conclude that Petitioner” slip op. at 40

  Patent outcomesUS 11,021,867 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 11,021,867
• Blackberry Corp. / Blackberry Ltd. v. Zipit Wireless, Inc.Some claims unpatentable
  PTAB · Mar 29, 2016 · IPR2014-01509 · APJ Frances L Ippolito · IPR · Final written decision

  Claims 1, 2, and 4–7 are unpatentable over the stated obviousness grounds; claims 9, 10, and 12 were not shown unpatentable over Lotter.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert discountedOther

    “Ex. 2082 ¶ 94. While an argument may be made that Dr. Konchitsky’s description of his Master’s degree is merely harmless embellishment or an artful rewording having the same effective meaning, we find that Dr. Konchitsky, nevertheless, incorrectly described his Master’s degree and misrepresented his credentials to the Board. Further, that Dr. Konchitsky may be qualified to testify based on his undergraduate degrees and experience, as asserted by Patent Owner (Tr. 21:16–5), does not mitigate Dr. Konchitsky’s misrepresentation of his credentials nor preclude us from weighing his testimony in light of such misrepresentation. We expect all parties and individuals involved in proceedings before the Board to “have a duty of candor and good faith to the Office during the course of a proceeding.” 37 C.F.R. § 42.11. Moreover, we agree with the sentiment that “[e]ven the slightest accommodation of deceit or a lack of candor in any material respect quickly erodes the validity of the process. As soon as the process falters in that respect, the people are then justified in abandoning support for the system in favor of one where honesty is preeminent.” United States v. Shaffer Equip. Co., 11 F.3d 450, 457–59 (4th Cir. 1993). Therefore, we will consider Dr. Konchitsky’s statements regarding his Master’s degree in affording his testimony the appropriate weight.” slip op. at 10

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

    “Based on the complete record before us, we agree with the parties that the broadest reasonable interpretation of the term “database” is “a collection of information or data that is structured or organized to allow access and retrieval of the information by a computer.” This interpretation is consistent with the Specification, which, for example, describes device database 58 as storing identification data and allowing access of stored identification data by gateway 54. See Ex. 1001, 5:4–7, 8:7–9. Therefore, we adopt this construction. Moreover, we agree with Petitioner’s position that a “database” as claimed does not require a specific type of structure and even the “simplest” structure or organization of information would satisfy the element. The literal language of the claim language does not require fields, records, etc., and does not exclude the use of lists. Additionally, we determine that the literal language of the claim terms “control database” and “regulation database” do not require separate and distinct databases. Further, we have considered both parties’ arguments regarding the respective position each has taken in the related district court proceeding. These arguments are instructive, but not binding on our construction of the claim term “database” in our review. For example, Dr. Brody’s testimony in the district court proceeding that the Specification describes individual control and regulation databases (Ex. 2001 ¶ 191) does not persuade us that the claim terms require separate and distinct databases. It is well-settled that even “the fact that the specification describes only a single embodiment, standing alone, is insufficient to limit otherwise broad claim language.” Howmedica Osteonics Corp. v. Wright Med. Tech., Inc., 540 F.3d 1337, 1345 (Fed. Cir. 2008); see also Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (“Although the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.”). Accordingly, we construe the term “database” as “a collection of information or data that is structured or organized to allow access and retrieval of the information by a computer,” and do not limit “control database” and “device database” to separate and distinct databases.” slip op. at 14

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

    “upon by the Petitioner clearly and unequivocally disclose the invention as recited in claim 9 of the ’694 patent “without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.” See In re Arkley, 455 F.2d 586, 587 (CCPA 1972). First, although Lotter’s Abstract indicates an alert “and/or” message may be provided, this disclosure is not directed to the flowcharts of Figures 3A–3O, 6A–6B, and 7A–7B. Thus, based on the complete record before us, it is unclear whether this single sentence in the Abstract suggests the combination of the two embodiments shown in the Figures 3A–3O, 6A–6B, and 7A–7B, and if so, what aspects or steps of the flowcharts would be combined. See In re Brink, 419 F.2d 914, 917 (CCPA 1970) (“[I]f a reference is ambiguous and can be interpreted so that it may or may not constitute an anticipation of an appellant’s claims, an anticipation rejection under 35 U.S.C. § 102 based upon the ambiguous reference is improper.”). We decline to speculate on how the combination may be accomplished or whether such a combination would teach or suggest the features recited in claim 9 of the’694 patent.” slip op. at 27

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

    “Furthermore, we do not agree with Dr. Konchitsky’s position that a “PHOSITA would not seek to combine the teachings of de-centralized control of mobile devices with small networks of wireless access points, with Lotter. Such teachings are contrary to the purposes of, and would not be understood to operate with, Lotter.” Ex. 2004 ¶ 148. First, Patent Owner reads the purposes of Lotter and Walter too narrowly. As Petitioner discerns, Lotter and Walter are more generally directed to systems and methods for regulating the network and data service use of electronic devices such as mobile communication devices. Ex. 1005, Abstract, 1:58– 2:12; Ex. 1007 ¶¶ 12, 16. Second, we do not agree that the differences between Lotter’s and Walter’s systems are so great as to render their combination “contrary” or inoperable. Dr. Konchitsky observes Walter’s policies may be imposed on a wireless device “regardless” of what is already in Lotter’s Permissions database. Ex. 2004 ¶ 148. Assuming Dr. Konchitsky’s reading of Walter to be correct, we are not persuaded that adding another category of data service use restriction/rule/policy to Lotter’s system is incompatible with or contrary to Lotter’s general purpose of regulating data service use by mobile communication devices. Rather, the combination with a Walter-type policy provides the added feature of “different policy/control data for different predetermined networks at different locations because the policy controls on one network location, for example a school, would vary compared to another location, for example and office building” as explained by Dr. Brody. Ex. 1003 ¶ 84. Furthermore, Dr. Konchitsky’s statement that Walter’s teachings “would not be understood to operate with, Lotter” is not supported by the record with any evidence or technical reasoning as to why a person of ordinary skill in the art would determine that a combination of Lotter’s and Walter’s teachings “would not operate.” Thus, with regard to this statement, Dr. Konchitsky’s testimony is entitled to little to no weight. See, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”). Accordingly, we conclude that Petitioner has demonstrated by a preponderance of the evidence that claim 6 would have been obvious over Lotter, Patron, and Walter.” slip op. at 48

  Patent outcomesUS 8,190,694 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,190,694
• Square, Inc. v. Rem Holdings 3, LLCSome claims unpatentable
  PTAB · Jul 7, 2015 · IPR2014-00312 · APJ Denise M Pothier · IPR · Final written decision

  Claims 1, 2, 6, 7, and 10–17 are unpatentable under §103 over Lekernel and Padilla, alone or with Wallner; claims 3–5, 8, and 9 are not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “We agree that the McLaughlin declaration does not outline specific qualifications of one skilled in the art. Ex. 1015 ¶ 9. However, Dr. McLaughlin states, and we agree, that “the level of ordinary skill in the art is evidenced by the prior art references.” Id. and Pet. Reply 3 (citing In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)). We also agree with Petitioner that Patent Owner has unduly narrowed the qualifications of one of ordinary skill. See Pet. Reply 1. In particular, and in contrast with the above assertions, Patent Owner describes Mr. Bourdeauducq as an expert in the relevant field. PO Resp. 1 (stating “Sebastien Bourdeauducq (See Exhibit 2033), (and an actual expert in the Relevant Field)”). Yet, Mr. Bourdeauducq lacks several of the purported qualifications of an ordinarily skilled artisan that Patent Owner asserts. Pet. Reply 2. For example, Mr. Bourdeauducq was about eighteen years old when he wrote the Lekernel article, had no engineering degree, had about one week of experience with magnetic stripe card readers, and had a general consumer understanding of credit card processing. Id. (citing Ex. 1064, 12:14–15:20). Based on the record, we determine that the level of skill in the art is more aligned with a high school or first-year engineering student taking a class covering the topic of basic circuit analysis and having a general, consumer knowledge of magnetic card readers.4 Mr. Bourdeauducq, Dr. McLaughlin, Dr. Morley, and Mr. Wood all have these qualifications. Ex. 2033 ¶ 3 (referring to Exhibit A) and Ex. 1064, 15:16–20; Ex. 1015 ¶ 2 and Ex. 2035, 88:15–18; Ex. 2031 ¶¶ 6, 9; Ex. 2032 ¶¶ 7–8. As such, contrary to Patent Owner’s assertions, we disagree that the McLaughlin declaration should be given no weight. PO Resp. 11. Also, regardless of whether Dr. McLaughlin has immediate knowledge of certain details about magnetic card readers (e.g., card reader manufacturers, frequency characteristics of a read head signal when a card is swiped), we disagree that he is not qualified as an ordinarily skilled artisan. See PO Resp. 16, 19 (quoting portions from Ex. 2035); see Pet. Reply 1–2.” slip op. at 12

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedMixed

    “We agree that the McLaughlin declaration does not outline specific qualifications of one skilled in the art. Ex. 1015 ¶ 9. However, Dr. McLaughlin states, and we agree, that “the level of ordinary skill in the art is evidenced by the prior art references.” Id. and Pet. Reply 3 (citing In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)). We also agree with Petitioner that Patent Owner has unduly narrowed the qualifications of one of ordinary skill. See Pet. Reply 1. In particular, and in contrast with the above assertions, Patent Owner describes Mr. Bourdeauducq as an expert in the relevant field. PO Resp. 1 (stating “Sebastien Bourdeauducq (See Exhibit 2033), (and an actual expert in the Relevant Field)”). Yet, Mr. Bourdeauducq lacks several of the purported qualifications of an ordinarily skilled artisan that Patent Owner asserts. Pet. Reply 2. For example, Mr. Bourdeauducq was about eighteen years old when he wrote the Lekernel article, had no engineering degree, had about one week of experience with magnetic stripe card readers, and had a general consumer understanding of credit card processing. Id. (citing Ex. 1064, 12:14–15:20). Based on the record, we determine that the level of skill in the art is more aligned with a high school or first-year engineering student taking a class covering the topic of basic circuit analysis and having a general, consumer knowledge of magnetic card readers.4 Mr. Bourdeauducq, Dr. McLaughlin, Dr. Morley, and Mr. Wood all have these qualifications. Ex. 2033 ¶ 3 (referring to Exhibit A) and Ex. 1064, 15:16–20; Ex. 1015 ¶ 2 and Ex. 2035, 88:15–18; Ex. 2031 ¶¶ 6, 9; Ex. 2032 ¶¶ 7–8. As such, contrary to Patent Owner’s assertions, we disagree that the McLaughlin declaration should be given no weight. PO Resp. 11. Also, regardless of whether Dr. McLaughlin has immediate knowledge of certain details about magnetic card readers (e.g., card reader manufacturers, frequency characteristics of a read head signal when a card is swiped), we disagree that he is not qualified as an ordinarily skilled artisan. See PO Resp. 16, 19 (quoting portions from Ex. 2035); see Pet. Reply 1–2.” slip op. at 12

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

    “§§ “Requisites,” “Hardware,” and “Improvements” and Ex. 1015 ¶¶ 39–42). Patent Owner does not dispute these findings related to Padilla or reasons to combine the references. See generally PO Resp. The record also reflects that conditioning signals within a circuit to achieve a desired result was known and, given the combined Lekernel/Padilla system, one skilled in the art would have conditioned signals sent from the card reader to the microphone input based on the cell phone’s characteristics. See Dec. on Inst. 12, 14–15 (citing Pet. 17–18 (discussing proving an analog signal in an acceptable processing range) and citing Ex. 1015 ¶ 29). In the Decision to Institute, we discussed cell phone characteristics, such as Padilla’s, and how these characteristics relate to whether signal attenuation is needed for the phone’s input. See Dec. on Inst. 14 (citing Ex. 1015 ¶ 29). For example, Padilla suggests using phones other than “the Siemens MC60” to turn a mobile phone into a magnetic stripe reader. Ex. 1010 § “Foreword.” Accordingly, based on the cell phone selected and its characteristics, we determine that one skilled in the art would have recognized that conditioning signals inputted and received by a cell phone’s microphone input may be necessary. Dec. on Inst. 12 (citing Pet. 17), 14. Specifically, we concluded that “an ordinarily skilled artisan would have recognized that the characteristics of the cell phone’s microphone input impact whether attenuation between the read head and the cell phone’s microphone input is needed.” Dec. on Inst. 14; see also Pet. 21–22, 24–25. The record includes two particular examples where one skilled in the art would have added resistance to Lekernel’s circuit and attenuated the signal received by the phone of the combined Lekernel/Padilla system. See Dec. on Inst. 14 (citing to Ex. 1015 ¶ 29). First, Dr. McLaughlin describes a known technique of providing the microphone input an acceptable level for the cell phone using a voltage divider by placing a resistor at the output of coil 24 or the read head. Ex. 1015 ¶ 16. To be clear, in this scenario, the resistor would be added outside Figure 2’s amplifier in Lekernel to achieve a voltage drop and to “to ensure the signal falls within a range of signals detectable and usable by a cell phone,” preventing damage to a recipient device. See Ex. 1015 ¶¶ 9, 14. Dr. McLaughlin further discusses impedance matching the card reader circuit with the cell phone’s microphone input when the cell phone has internal amplification. Dec. on Inst. 14 (citing Ex. 1015 ¶ 29); Ex. 1015 ¶¶ 28–29. Given the background knowledge of an ordinary artisan, one skilled in the art would have understood to add resistance to the combined Lekernel/Padilla system (e.g., after the amplifier in Lekernel’s Figure 2) for attenuating the signal sent to the microphone input in order to achieve an acceptable level for the cell phone and/or to impedance match the read head device with the cell phone.” slip op. at 18

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “In the context of this proceeding, we do not agree with Patent Owner’s contention that when the marketed product embodies and is coextensive with the claimed features, a secondary consideration factor (e.g., commercial success) is a presumptively attributed to the claimed invention. PO Resp. 49–50. For example, In re Huang, 100 F.3d 135 (Fed. Cir. 1996) states “that [commercial] success is relevant in the obviousness context only if there is proof that the sales were a direct result of the unique characteristics of the claimed invention-as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter.” Id. at 140 (emphasis added); see also In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (indicating there is no nexus where the evidence results from something other than what is both claimed and novel in the claim). Thus, in establishing a nexus with a secondary consideration in this proceeding, Patent Owner needs to show a specific feature of the claim is attributable to the commercial success of Square’s card reader and not just that the device is coextensive with the claimed features. Patent Owner points to an interview of Mr. Jack Dorsey, described as Square’s CEO. PO Resp. 51–52. In the interview and in response to asking what Square was, Mr. Dorsey states “OK, well [ah] Square is [ahh] a very simple little device that plugs into your iPhone or Android device and allows anyone to accept credit card immediately wherever they are.” PO Resp. 52 (citing Ex. 2047). Patent Owner asserts that this discussion establishes a nexus to the claimed “output plug” feature. Id. Yet, this statement just describes the plug and does not relate the plug itself to any of Square’s commercial success. The statement is also vague as how the device plugs into a phone, such that there is an insufficient tie to the recited “output plug, adapted to be inserted into a jack associated with a microphone input associated with a cell phone” in claim 1. Ex. 1001, 6:66– 67 (emphasis added). Although stating the reader is “very simple” and “little,” Patent Owner has not demonstrated these features are claimed and are a novel or unique feature of the claims — a requisite needed to outweigh the case for obviousness based on commercial success.” slip op. at 25

  Patent outcomesUS 8,584,946 mixed
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 8,584,946
• Corning Incorporated v. DSM IP Assets B.V.Some claims unpatentable
  PTAB · May 1, 2014 · IPR2013-00052 · APJ Zhenyu Yang · IPR · Final written decision

  Claims 11-23 and 26-31 are unpatentable; Corning did not prove claims 24, 25, and 32-34 unpatentable because its obviousness showing was insufficient and its renewed %RAU data was improper reply evidence.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We find Professor Sogah’s explanation more persuasive. First, after Corning submitted Professor’s Sogah’s declaration rebutting Professor Bowman’s opinion, DSM cross-examined Professor Sogah for two days. See Exs. 2060, 2061. In its Motion for Observations on Cross-Examination of Corning Reply Declarants, DSM called to our attention several deposition testimony excerpts from other Corning experts. See Paper 70. Had DSM found any support for its allegation that Corning improperly prepared the oligomer samples, it could have pointed it out to us. See Office Patent Trial Practice Guide (“Trial Practice Guide”), 77 Fed. Reg. 48,756, 48,767-68 (Aug. 14, 2012). It did not do so. In fact, DSM did not call to our attention any testimony from Professor Sogah. More importantly, DSM’s scientists do not appear to have given much weight to the low-molecular-weight region of the GPC spectrum. See Ex. 1039, 144:6–147:22. Indeed, when a DSM’s scientist presented the oligomer test data to Professor Bowman, she did not include data of the lowmolecular-weight region. See id. at 146:12-15 (“So the one that I’m sure had been done before it was the di -- the diisocyanate diacrylate. They had run that before. She thought she knew where it should show up, but couldn’t pull out that data.”); id. at 146:20-25 (“And I think the same thing was true of the lauryl acrylate as was true of the diisocyanate diacrylate. She knew from her experience where it would show up, but I again indicated I needed more than her experience, that I wanted see that run as a sample itself . . . .”). This testimony confirms Professor Sogah’s position, i.e., when analyzing a GPC chromatogram to assess oligomer formation, a skilled polymer chemist would focus on the oligomer peaks in the high-molecular-weight region, and not the peaks of the starting materials or tracer in the low-molecular-weight region. Ex. 1071 ¶¶ 56-57. We find that Corning has established that it properly prepared the oligomer it used for testing. DSM has not presented enough evidence to lead us to doubt the quality of Corning’s oligomer preparation. Based on the record developed at trial, we find a preponderance of evidence supporting unpatentability of claims 11-23 and 26-31. See 35 U.S.C. § 316(e). Specifically, we are persuaded by the data and testimony Corning presented in support of its position that Examples 4 and 5B of Szum ’041 inherently anticipate claims 11-14, 16-21, 26, 27, 29, and 30. See Pet. 18-26; Ex. 1013” slip op. at 7

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

    “We find that Corning has established that it properly prepared the oligomer it used for testing. DSM has not presented enough evidence to lead us to doubt the quality of Corning’s oligomer preparation. Based on the record developed at trial, we find a preponderance of evidence supporting unpatentability of claims 11-23 and 26-31. See 35 U.S.C. § 316(e). Specifically, we are persuaded by the data and testimony Corning presented in support of its position that Examples 4 and 5B of Szum ’041 inherently anticipate claims 11-14, 16-21, 26, 27, 29, and 30. See Pet. 18-26; Ex. 1013 ¶¶ 106-29, 135; Ex. 1014 ¶¶ 35-39. Also, Corning presented persuasive data and testimony supporting its position that Example C of Snowwhite inherently anticipates claims 11-22 and 26-30. See Pet. 48-54; Ex. 1013 ¶¶ 209-28, 231; Ex. 1014 ¶¶ 35-39. Further, Corning presented data and testimony sufficient to support its position that the combination of Snowwhite, Fouassier, and Levy renders claim 23 obvious, and that the combination of Snowwhite and Zahora (or the combination of Szum ’041, Snowwhite, and Zahora) renders claim 31 obvious. See Pet. 30-31, 55-58; Ex. 1013 ¶¶ 233-46.” slip op. at 8

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We decline to consider Corning’s “renewed” %RAU data because they are improper reply evidence and because considering the data at this late stage would not serve the interest of justice. “A reply may only respond to arguments raised in the corresponding opposition or patent owner response.” 37 C.F.R. § 42.23(b). When DSM challenged the soundness of Corning’s methodology, a proper reply could have included, for example, Corning’s rebuttal to contradict DSM’s allegation and any supporting evidence to confirm the veracity of Corning’s original %RAU data. These options were not available to Corning because it, in fact, discovered errors in that testing. Reply 7-8. Instead, Corning provided new evidence of %RAU data of an entirely new batch of samples tested under a new protocol, including using a new light meter. Id. at 8-10. Such evidence, and Corning’s argument relying on such evidence, exceeded the proper scope of a reply. Corning insisted that its new reply evidence, or at least the portion using the new ILT1400/XRL140B meter, was in response to Professor Bowman’s criticism of Corning’s test procedure. See Tr. 6:12-24. We disagree. “Examples of indications that a new issue has been raised in a reply include new evidence necessary to make out a prima facie case for the patentability or unpatentability of an original or proposed substitute claim, and new evidence that could have been presented in a prior filing.” Trial Practice Guide, 77 Fed. Reg. at 48,767. Corning’s reply evidence falls squarely into this category. Corning conceded that it could not rely on the original %RAU data in the Petition to support its position that Szum ’041 inherently anticipates claims 32-34. See Tr. 5:14-21. Thus, Corning’s “renewed” %RAU data in the Reply becomes necessary to make its case for unpatentability of claims 32-34.” slip op. at 11

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

    “[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. Although common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Here, Corning argued that “it was well known to include multiple photoinitiators in radiation-curable compositions, for instance, to improve cure speed and optimize performance properties.” Pet. 28. Having initially found this reasoning persuasive, we instituted this review. After institution, DSM, however, came forward with evidence showing other considerations at play. See PO Resp. 26-30. Indeed, Professor Bowman explained why one skilled in the art would not have had a reason to use five photoinitiators and in the amount as claims 24 and 25 require. See, e.g., Ex. 2029 ¶¶ 46-48. He refers to express teachings in Ciba to support his opinion. For example, “a frequent cause of insufficient through-cure is too much photoinitiator in the composition, and as Ciba expressly teaches, this problem can often be rectified by using lower levels of photoinitiators.” Id. ¶ 47; see also id. ¶ 48 (pointing to the cost concerns expressed in Ciba). We find Professor Bowman’s opinion credible, especially given that both the opinion and the evidence referred to therein stand unrebutted by Corning. A second independent basis supports our conclusion that Corning has” slip op. at 18

  Patent outcomesUS 7,276,543 mixed
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,276,543

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.