- Edwards Lifesciences Corporation v. Boston Scientific Scimed, Inc.Some claims unpatentablePTAB · Oct 31, 2018 · IPR2017-01281 · APJ James A Tartal · IPR · Final written decision
Claims 5, 6, 8–12, 14, 16, and 17 are unpatentable: claim 5 is anticipated by Dlugos; the remaining claims are obvious over the specified combinations.
RulingsFinal written decision- BurdenMixed
“evidence discussed in the Petition, including the declaration of Mr. Trotta. For the reasons that follow, we determine that Petitioner has shown by a preponderance of the evidence that claim 5 is anticipated by Dlugos and would have been obvious over Dlugos and Eskaros; that claim 8 would have been obvious over Dlugos, Eskaros, and Hijlkema; that claims 6, 14, and 16 would have been obvious over Dlugos, Eskaros, and Forman; that claims 9, 10, and 12 would have been obvious over Dlugos, Eskaros, and Traxler; that claim 11 would have been obvious over Dlugos, Eskaros, Traxler, and Forman; and that claim 17 would have been obvious over Dlugos, Eskaros, Forman, and Becker.” slip op. at 24
- Expert testimonyPetitioner expert discountedOther
“shown that Dlugos necessarily teaches first and second cone regions of the balloon having at least one fold in the fully inflated state. Moreover, we find Mr. Trotta’s testimony in support of Petitioner’s contention insufficient. According to Mr. Trotta: When folds are welded down, as shown in the figure 3, it would necessarily result in folds remaining in the transition/cone regions of the balloon when the balloon is inflated, and even when fully inflated to the specifications on the label. Because the folds are captured within the welded region, even when the balloon is fully inflated, the pressure will distribute such that there is more pressure in the working region and less pressure at the transition regions. Thus, there is insufficient pressure in the transition cone regions for the folds to be completely removed. Ex. 1005 ¶ 119. Mr. Trotta cites no support for his opinions and offers no plausible explanation for why “pressure will distribute such that there is more pressure in the working region and less pressure at the transition regions,” rather than equal pressure throughout the interior space of a balloon. Nor are we persuaded that statements by the Examiner during prosecution identified by Petitioner, which Patent Owner contends were later abandoned by the Examiner, are sufficient to establish the inherency of the claimed feature. See Pet. 39–40; Prelim. Resp. 14–15. Petitioner has not shown by a preponderance of the evidence that Dlugos teaches “first and second cone regions of the balloon having at least one fold in the fully inflated state” because Petitioner has not shown that Dlugos necessarily teaches any cone region having at least one fold in the fully inflated state, much less both a first and a second cone region, in the absence of a persuasive showing that Dlugos teaches welding both ends of the balloon to the shaft.” slip op. at 40
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the claimed invention would have had either of the following qualifications: (1) “an undergraduate degree in mechanical manufacturing or material science engineering, as well as at least five years of experience in the industry working with catheters and balloons and the manufacturing of those devices; or without an undergraduate degree,” or (2) “ten years of working experience designing, manufacturing and/or overseeing the processes for designing and/or manufacturing the tools and/or the devices.” Pet. 14. Mr. Trotta supports Petitioner’s contention with regard to the level of ordinary skill in the art. Ex. 1005 ¶ 57. Patent Owner does not contest Petitioner’s asserted level of ordinary skill in the art. See Prelim. Resp. 6 n.3. Based on the evidence provided, including the prior art of record, we agree with Petitioner’s proposed level of ordinary skill and also find that the prior art of record further reflects the level of ordinary skill in the art. See also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art of record may reflect the level of ordinary skill in the art).” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“For the following reasons, we find insufficiently supported and unreasonably broad Petitioner’s contention that “fold” broadly includes all “lobes,” “wraps,” “wrappings,” and “protrusions,” even if those terms appear in some context in patent applications incorporated by reference to the ’767 patent. Petitioner neither identifies precisely where that context can be found in the record of this proceeding nor offers any explanation of that context to demonstrate by a preponderance of the evidence that the term, reasonably construed in light of the Specification of the ’767 patent, defines “fold” as including all “lobes,” “wraps,” “wrappings,” and “protrusions.” The mere incorporation by reference of other applications into the Specification of the ’767, absent further persuasive explanation, does not sufficiently support the proposition that the term “fold” broadly encompasses, for example, any “protrusion.” Moreover, Petitioner provides no explanation for why “examples of methods of balloon folding” that “reference” the terms “lobes,” “wraps,” “wrappings,” and “protrusions” demonstrate that the meaning of “fold” encompasses those terms. Finally, the ’767 patent expressly states that the term “fold”’ includes “pleats, wings, and any similar structure.” Ex. 1001, 3:62–63. Petitioner, however, makes no persuasive showing supported by more than conclusory assertions that all “lobes,” “wraps,” “wrappings,” and “protrusions” constitute “similar structure” to folds, pleats, or wings. Accordingly, we find the term “fold” in the ’767 patent encompasses “pleats, wings, and any similar structure.” Thus, “fold” also encompasses lobes, wraps, wrappings, or protrusions (or any other feature) only to the extent such feature constitutes “similar structure” to folds, pleats, or wings.” slip op. at 14
Patent outcomesUS 7,828,767 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,828,767 - Telebrands Corp. v. Tinnus Enterprises, LLCNo claims unpatentablePTAB · Oct 10, 2018 · PGR2017-00015 · APJ Kevin W Cherry · PGR · Final written decision
The Board held claims 1–4 not unpatentable: the obviousness grounds failed to establish the claimed elastic fastener limitation, and claim 3 was not shown indefinite or lacking written-description support.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We agree with Petitioner and determine that a POSA would have been a person having a general knowledge about, and experience with, expandable containers, including, without limitation, balloons, and at least an associate’s degree in mechanical engineering, or the equivalent. This level of skill is consistent with the types of problems and solutions described in the ’612 patent and cited prior art. For example, the ’612 patent describes a fluid inflatable system that uses elastic valve 20A (e.g., mechanical gasket, O-ring, etc.) for sealing fluid inside multiple containers (e.g., water balloons). See Ex. 1001, 1:22–24, 3:10–16. In any event, none of the issues in this case turn on the definition of a POSA, and the prior art of record provides ample evidence of the level of skill in the art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill was best determined by the references of record); see also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown”’) (internal citation omitted).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“1. Terms Construed in the Institution Decision We construed the term “elastic fastener” in our Decision on Institution, which is set forth in the following table. Inst. Dec. 14. Claim Term Construction in Institution Decision elastic fastener “an elastic element for attaching things together” Neither party disputes the language of this construction. See generally Prelim Resp. 17; Reply. We adopt them for this Final Written Decision. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015) (quoting Rodale Press, Inc. v. FTC, 407 F.2d 1252, 1256–57 (D.C. Cir. 1968)) (“‘an agency may not change theories in midstream without giving respondents reasonable notice of the change’ and ‘the opportunity to present argument under the new theory.’”)” slip op. at 14
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteNot shown unpatentable
“While the terms “unfilled state” and “filled state” describe the fullness for a container, we do not agree with Petitioner that the claim language requires determining the precise amount of fluid for each state. Section 112(b) requires that we read claim terms in the context of the surrounding claim language, not in isolation. Telebrands, 733 F. App’x at 1020. When we look at the entire claim phrase—“regardless whether the first and second ones of the plurality of containers are in a filled state or an unfilled state”— the plain language is clear that regardless of whether the balloons are in either state, the “at least first and second ones of the plurality of containers are disposed sufficiently close to each other such that they press against each other.” In other words, the exact volume of fluid or water needed to reach a “filled state” does not need to be determined in order to understand the metes and bounds of the claim so as to understand how to avoid infringement. We are further persuaded because this is consistent with the district court’s construction of this term. See Ex. 1023, 19–20.” slip op. at 17
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable
“Based upon our review of the specification, and consideration of the arguments and evidence presented, Petitioner’s position is not persuasive. We agree with Patent Owner that Petitioner has failed to show that the ’612 patent does not provide such adequate guidance to a person of ordinary skill in the art. On its face, Figure 1 of the ’612 patent (reproduced below) shows containers 18 in contact or pressing against one another with the reasonable clarity required by Vas–Cath Inc. Figure 1 of the ’612 patent is reproduced above. Although the ’612 patent describes, as Petitioner notes, that tubes 16 can be different lengths, we are not persuaded that the ’612 patent’s disclosure of an embodiment with different tube lengths detracts from the concurrent disclosure in Figure 1 of an embodiment, where it is difficult to describe containers 18 as being not in contact with each other. Additionally, we agree with Patent Owner that Petitioner has failed to show adequately that a person of ordinary skill would not have understood the ’612 patent as describing the containers in Figure 1 as pressing against one another in an unfilled state. The ’612 patent indicates Figure 1 shows elastic valve 20A in an open configuration when container 18A is attached to tube 16A to allow container 18A to fill with fluid. Ex. 1001, 3:14–18. In this open configuration, container 18A is to be filled with fluid, after which, “it may be removed from tube 16A, whereupon elastic valve 20A closes, thereby closing the neck of container 18A and sealing the fluid inside.” Id. at 3:18–21 (emphasis omitted). The ’612 patent refers to Figure 1 to describe an embodiment where elastic valve 20A is in an open configuration to fill a container that has not been filled (i.e., unfilled) and removed from tube 16A. Thus, we are persuaded that, at least, Figure 1 and this accompanying description of Figure 1 in the ’612 patent provides sufficient written description for the recited limitation that “at least first and second ones of the plurality of containers are disposed sufficiently close to each other such that they press against each other . . . in a filled state or an unfilled state.”” slip op. at 21
Patent outcomesUS 9,527,612 not shown unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 9,527,612 - Nikon Corporation v. ASML Netherlands B.V. Carl Zeiss AGRehearing deniedPTAB · Oct 4, 2018 · IPR2018-00688 · APJ Jeffrey S Smith · IPR · Rehearing
The Board denied the Patent Owner’s rehearing request, leaving institution in place for claims 1–4, 6, 7, 15, 16, and 19 because it found no abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burden of showing that the Decision should be modified is on Patent Owner, the party challenging the Decision. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Decided for petitioner
“function limitations because, according to Patent Owner, we did not address Patent Owner’s contention that Petitioner’s analysis did not show that the prior art structures are the same or equivalent to structures disclosed in the Specification for performing the functions recited in claims 15, 16, and 19. Req. 3–6. We did address Patent Owner’s contention in our Decision. Dec. 18. In our analysis of the means plus function limitations recited in claim 15, we stated that The Petition identifies the structure in the Specification corresponding to the claimed “first filtering means” as a linear matched filter, and identifies the equivalent structure in Yow as a matched bandpass filter. Pet. 13–14, 27. The Petition identifies the structure in the Specification corresponding to the claimed “second filtering means” as a non-linear filter, and identifies the equivalent structure in Yow as a non-linear edge detector. Pet. 14, 27. Id. Our Decision includes similar analyses for claims 16 and 19. See Dec. 19. Patent Owner does not persuade us that we misapprehended the law for means plus function limitations. Rather, Patent Owner simply disagrees with our Institution Decision on this issue. Mere disagreement with our conclusion is not a proper basis for rehearing.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner did not establish sufficiently that Yow Thesis was available as a printed publication, we should not have instituted trial on the grounds based on Yow Thesis. Req. 6–7 (citing Dec. 26). However, at this time, if the Board institutes a trial, the Board will institute on all challenges raised in the Petition. See Guidance on the Impact of SAS on AIA Trial Proceedings, April 26, 2018, available at https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial. Accordingly, we deny Patent Owner’s Request for Rehearing.” slip op. at 4
Claim constructionPatents in suitUS 6,463,163 - Nikon Corporation v. ASML Netherlands B.V. Carl Zeiss AGRehearing deniedPTAB · Oct 1, 2018 · IPR2018-00687 · APJ David C Mckone · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution on claims 1–12 unchanged because Patent Owner showed no overlooked argument or misapprehended law.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We are not persuaded by Patent Owner. Patent Owner does not contend that we overlooked or misapprehended its argument. Indeed, we discussed it in detail. Dec. 16–20. Patent Owner also does not persuade us that we misapprehended the law of obviousness. Rather, Patent Owner simply disagrees with our Institution Decision on this issue. Nevertheless, mere disagreement with our conclusion is not a proper basis for rehearing. Accordingly, we deny Patent Owner’s Request for Rehearing.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We note that our determination that there would have been reasons to modify Takahashi is not final and that Patent Owner is not precluded from raising in its Patent Owner Response the arguments presented in the Request for Rehearing.” slip op. at 4
§ 103 obviousnesscites KSRPatents in suitUS 6,731,335 - Grit Energy Solutions, LLC v. Oren Technologies, LLCRehearing deniedPTAB · Aug 7, 2018 · IPR2017-00768 · APJ Michael L Woods · IPR · Rehearing
The Board denied the petitioner’s rehearing request, leaving intact its conclusion that claims 1–7 were not shown unpatentable under the instituted grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the burden of showing a decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d). Therefore, Petitioner bears the burden of establishing that we misapprehended or overlooked the matters that it requests that we review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“we found that “for at least the following two reasons, we disagree[d] with Petitioner’s argument that transposing Eng Soon’s pin and receptacle would have been a simple substitution to achieve predictable results.” Final Dec. 22 (citations omitted) (emphasis added). In other words, even if we found that Constantin discloses an orifice or receptacle attached to its actuator—which we do not—we also found that transposing Eng Soon’s pin and receptacle as proposed by Petitioner would result in a more expensive system, and we disagreed with Petitioner’s assertion that modifying Eng Soon would have been a mere simple substitution. See Final Dec. 24 (“we agree with Mr. Smith that a POSITA would not modify Eng Soon to ‘reduce cost,’ as Petitioner proposes . . ., when doing so would increase the overall cost of the mobile containers”) (citing Ex. 2040 ¶ 76). Moreover, even if we treat Petitioner’s First Rationale as separate from its Second Rationale—thereby ignoring the Second Rationale when considering the First Rationale—when considered alone, Petitioner’s First Rationale fails to explain adequately why a POSITA would have transposed Eng Soon’s pin and receptacle. See Pet. 53–54. It is not enough to state that “[Eng Soon’s] pin and receptacle perform the same function to achieve the same result, regardless of their position, [and that] a POSITA would have been able to make the swap.” Reh’g Req. 11; see also Pet. 53–54 (“A POSITA reading Constantin would understand that there is no functional difference between these configurations”). In other words, it is not enough to argue that a POSITA could modify Eng Soon in a manner that meets the claims, without adequately explaining why a POSITA would make the modifications. See Personal Web Techs. LLC v. Apple, Inc., 848 F.3d 987, 993–94 (Fed. Cir. 2017) (finding that a skilled artisan would have understood that prior art could be combined insufficient; “it does not imply a motivation to pick out those two references and combine them to arrive at the claimed invention”). Indeed, we found that the proposed modification would result in a more expensive system. See Final Dec. 24.” slip op. at 9
- BurdenDecided for patent owner
“all challenged claims (claims 1–7) under all grounds, namely, Grounds 1 and 2.” Final Dec. 2. Indeed, the Petition sets forth only two grounds; Ground 1 challenging claims 1–3 and 5, and Ground 2 challenging claims 4, 6, and 7. Pet. 6 (Statutory Grounds of Challenge). In our Final Written Decision, we determined that Petitioner failed to meet its burden that any of the challenged claims are unpatentable. Final Dec. 2–3. In particular, we found that Constantin does not disclose an orifice attached to an actuator and concluded that a POSITA would not have modified Eng Soon as Petitioner proposed. See id. at 17–25. We find nothing in Petitioner’s “G1Constantinbased challenges” that cures these fatal defects. Moreover, Petitioner’s statement in footnote 5 that certain “aspects” of Eng Soon and Constantin can somehow be “vice-versa” swapped with other “aspects” fails to rise to the specificity and particularity required under 35 U.S.C § 312(a)(3) and 37 C.F.R. § 42.104(b). The function of the Board is not to comb through the cited art in order to determine the strongest combination of references to meet the claims, thereby overcoming whatever deficiencies may exist in the Petition. See generally LG Elecs., Inc. v. Rosetta-Wireless Corp., Case IPR2016-01516 (PTAB Apr. 3, 2017) (Paper 25).” slip op. at 11
§ 103 obviousnessPatents in suitUS 8,585,341 - Infobionic, Inc. v. Braemar Manufacturing, LLCAll claims unpatentablePTAB · Jul 27, 2018 · IPR2017-00796 · APJ Michael L Woods · IPR · Final written decision
Claims 1–9 and 11–26 are unpatentable: claims 1–6, 9, 11–14, 16–20, 22, 24, and 26 as obvious over Ferguson and Kehr; claims 7, 15, 21, 23, and 25 over Ferguson, Kehr, and Yasushi; claim 8 …
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on our review of the ’767 patent, the types of problems and solutions described in the ’767 patent and applied prior art, and the testimony of Dr. Stone and Dr. Fernald, we adopt Petitioner’s asserted level of ordinary skill and find that a POSITA at the time of the alleged invention would have at least a bachelor’s degree in a suitable engineering field (e.g., mechanical or electrical), or equivalent proficiency, and at least two to three years of experience in the research and/or development of remote patient monitoring systems, such as cardiac remote patient monitoring systems, where more education may substitute for relevant experience and vice versa. Stone Decl. ¶¶ 13-14. This education and experience would include a solid familiarity with the communication between components of a patient monitoring system. Pet. 6–7 (citing Ex. 1002 ¶¶ 13–14). We also agree with Patent Owner that any differences in the parties’ proposed level of ordinary skill does not impact our analysis. See PO Resp. 8.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner does not rely on Ferguson’s base station for being both battery-powered and “plugged in,” or having both a landline connection and a cellular connection, as Patent Owner’s argument presumes (Pet. 15–18), nor does Petitioner’s proposed modification require the combined system to disclose such structure (see id.). Furthermore, claim 1 does not require the claimed communications device to be both battery powered and plugged into a wall, or have both a landline and wireless connection. Ex. 1001, 7:2–36. Even if Ferguson only uses a single cellular connection for data transfer (Ex. 1004, 5:30–33 (“[f]or data transfer, the base station connects the memory card or smart card, via modem and land or cellular telephone line”)), we find persuasive Dr. Stone’s testimony that a POSITA would have been motivated to delay routine, non-urgent communications, to avoid tying up that cellular line (see Ex. 1002 ¶¶ 111–114). We credit Dr. Stone’s testimony that “incorporating the transmission timing scheme of Kehr into the system of Ferguson would have been routine for one of ordinary skill and desirable for promoting resource efficiency.” Ex. 1002 ¶ 114. In particular, we find persuasive Dr. Stone’s testimony that modifying Ferguson would “strike an appropriate balance of ensuring patient safety (e.g., by requiring immediate transmission of urgent data) while avoiding the use of power and cellular bandwidth resources (e.g., by allowing later transmission of non-urgent data).” Id. (emphasis added).” slip op. at 29
- ExcludeMotion to exclude, deniedDenied
“We agree with Petitioner. First, we agree with Petitioner that Patent Owner has not met its burden of explaining why these exhibits must be excluded as hearsay. Id. at 1. Here, Patent Owner refers to the exhibits as a whole and does not state precisely what aspect of these 18 exhibits are hearsay. See Paper 25, 1– 2. Further, Patent Owner’s argument challenges the sufficiency of the evidence in arguing that “nothing in these [exhibits] states that they are describing pricing for analog-only cellular plans . . . [or] states that users can use free nighttime and weekend minutes for data usage.” Id. at 1. By asserting that “nothing in” the exhibits support Dr. Stone’s testimony, Patent Owner’s argument is a criticism of Dr. Stone’s testimony and instead focuses on the weight that we should give to the exhibits—and its related testimony—rather than to the exhibits’ admissibility as hearsay. See Paper 29, 4 (“[s]uch arguments go the exhibits’ weight, not their admissibility”). Thus, it is not a proper basis for a motion to exclude. Second, we agree with Petitioner that even if the exhibits are hearsay, the exhibits would be admissible under FRE 807. Paper 29, 3–4. To qualify for the residual exception under FRE 807, four requirements must be met: (1) the statement has equivalent circumstantial guarantees of trustworthiness; (2) it is offered as evidence of a material fact; (3) it is more probative on the point for which it is offered than any other evidence that the proponent can obtain through reasonable efforts; and (4) admitting it will best serve the purposes of these rules and the interests of justice. FRE 807. Petitioner argues persuasively that the four requirements are met. See Paper 29, 3–4. Regarding (1), circumstantial guarantees of trustworthiness, Petitioner points out that there “is no dispute regarding their authenticity and both parties and their experts relied on such Internet Archive Captures.” Id. at 3. Regarding (2), Petitioner argues that the statement is evidence of a material fact, namely, what a POSITA would have understood about cellular providers’ peak and off-peak pricing. Id. Regarding (3), Petitioner argues that “there is no better evidence reasonably available that shows these providers’ advertised rate plans at the time.” Id. at 4. Regarding (4), Petitioner argues that admitting these exhibits serves the interest of justice” slip op. at 57
- BurdenFwd mixedUnpatentable
“V. CONCLUSION We determine that Petitioner has shown by a preponderance of the evidence that: (1) claims 1–6, 9, 11–14, 16–20, 22, 24, and 26 are unpatentable over Ferguson and Kehr; (2) claims 7, 15, 21, 23, and 25 are unpatentable over Ferguson, Kehr, and Yasushi; and (3) claim 8 is unpatentable over Ferguson, Kehr, and Surwit. VI. ORDER In consideration of the foregoing, it is hereby: ORDERED that claims 1–9 and 11–26 of U.S. Patent No. RE43,767 E are unpatentable;” slip op. at 60
Patent outcomesUS RE43,767 unpatentable§ 103 obviousnesscites KSR · Graham - HTC Corporation / HTC America, Inc. v. Joe Andrew SalazarInstitution deniedPTAB · Jul 9, 2018 · IPR2018-00273 · APJ Matthew J Mcneill · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–7, 10, 14, 17, 23, 26–32, and 34 were unpatentable as obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“an ordinarily skilled artisan would combine Goldstein and Keenan to satisfy the limitation “a microprocessor creating a plurality of reprogrammable communication protocols.” Instead, the Petition provides conclusory assertions that the combination of Goldstein and Keenan teaches this limitation. See Pet. 20‒21, 23‒25. Similarly, Dr. Wolfe offers conclusory testimony that Goldstein teaches this limitation. See Ex. 1003, ¶¶ 41, 43. Dr. Wolfe does not testify that Keenan teaches this limitation. See id. at ¶¶ 41‒43. Petitioner’s conclusory assertions that the applied prior art teaches the “a microprocessor creating a plurality of reprogrammable communication protocols,” as claimed are entitled to little weight. See 37 C.F.R. § 42.56(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 Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”). Accordingly, Petitioner has failed to explain how the applied prior art references teach or suggest “a microprocessor creating a plurality of reprogrammable communication protocols,” as claimed. For these reasons, we conclude the Petition fails to show a reasonable likelihood of establishing that the combination of Goldstein and Keenan teaches or suggests a “microprocessor creating a plurality of reprogrammable communication protocols,” as recited in claim 1. We, therefore, conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge of independent claim 1.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“The ’467 patent does not define the term “reprogrammable” in the specification, and neither party argues the patentee disavowed the full scope of the claim in the specification or during prosecution. Accordingly, the plain and ordinary meaning of the term “reprogrammable” applies. The issue, then, is what is the plain and ordinary meaning of “reprogrammable”? Patent Owner proposes that the plain and ordinary meaning of “reprogrammable” is “a program that can be replaced with another.” Prelim. Resp. 3. This definition is supported by the dictionary cited by Patent Owner, consistent with the usage of the term in claim 1, and consistent with the objectives of the ’467 patent. See Ex. 1001, 2:47‒50 (“It is another object of the invention to provide a means for loading the microprocessor external memory of the handset or base station with updated or accessory programs and/or data bases.”); see also id. at 2:47‒64. Accordingly, we construe the term “reprogrammable” to mean “a program that can be replaced with another.”” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“an ordinarily skilled artisan would combine Goldstein and Keenan to satisfy the limitation “a microprocessor creating a plurality of reprogrammable communication protocols.” Instead, the Petition provides conclusory assertions that the combination of Goldstein and Keenan teaches this limitation. See Pet. 20‒21, 23‒25. Similarly, Dr. Wolfe offers conclusory testimony that Goldstein teaches this limitation. See Ex. 1003, ¶¶ 41, 43. Dr. Wolfe does not testify that Keenan teaches this limitation. See id. at ¶¶ 41‒43. Petitioner’s conclusory assertions that the applied prior art teaches the “a microprocessor creating a plurality of reprogrammable communication protocols,” as claimed are entitled to little weight. See 37 C.F.R. § 42.56(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 Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”). Accordingly, Petitioner has failed to explain how the applied prior art references teach or suggest “a microprocessor creating a plurality of reprogrammable communication protocols,” as claimed. For these reasons, we conclude the Petition fails to show a reasonable likelihood of establishing that the combination of Goldstein and Keenan teaches or suggests a “microprocessor creating a plurality of reprogrammable communication protocols,” as recited in claim 1. We, therefore, conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge of independent claim 1.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“Moreover, neither the Petition nor Dr. Wolfe’s testimony address how an ordinarily skilled artisan would combine Goldstein and Keenan to satisfy the limitation “a microprocessor creating a plurality of reprogrammable communication protocols.” Instead, the Petition provides conclusory assertions that the combination of Goldstein and Keenan teaches this limitation. See Pet. 20‒21, 23‒25. Similarly, Dr. Wolfe offers conclusory testimony that Goldstein teaches this limitation. See Ex. 1003, ¶¶ 41, 43. Dr. Wolfe does not testify that Keenan teaches this limitation. See id. at ¶¶ 41‒43. Petitioner’s conclusory assertions that the applied prior art teaches the “a microprocessor creating a plurality of reprogrammable communication protocols,” as claimed are entitled to little weight. See 37 C.F.R. § 42.56(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 Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”). Accordingly, Petitioner has failed to explain how the applied prior art references teach or suggest “a microprocessor creating a plurality of reprogrammable communication protocols,” as claimed. For these reasons, we conclude the Petition fails to show a reasonable likelihood of establishing that the combination of Goldstein and Keenan teaches or suggests a “microprocessor creating a plurality of reprogrammable communication protocols,” as recited in claim 1. We, therefore, conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge of independent claim 1.” slip op. at 15
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 5,802,467 - Riot Games, Inc. v. Paltalk Holdings, Inc.Rehearing deniedPTAB · Jun 29, 2018 · IPR2018-00129 · APJ Thu A Dang · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in instituting review of claims 1–10, 16–18, and 31–47 based on the RFCs’ public accessibility.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS When rehearing a decision on petition, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing an abuse of discretion, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“and slides) disseminated to members of even a somewhat closed group without restriction as to further dissemination may tend to indicate public accessibility of the documents, in light of other factors, even in the absence of indexing for search purposes. See Medtronic, Inc. v. Barry, No. 2017- 1169, 2018 WL 2769092, at **8–9 (Fed. Cir. June 11, 2018) (“Further, even if the Board were correct in its assumption that Medtronic only gave the Video and Slides to the SDSG members, it did not address whether the disclosures would remain confidential.”)4 On this preliminary record, Petitioner’s evidence shows sufficiently that mailing list members would have been apprised of a new RFC’s contents, at least via the Internet Society’s newsletter’s summary, if not via the mailing list (coupled with prior knowledge of the documents via group circulation thereof), with unrestricted access to the newly published RFC documents, and without any further restriction as to dissemination. See Ex. 1026 ¶¶ 18–24. In other words, prior to official publication of RFC documents, “[t]he Area Director . . . circulates the document to the wider IETF community, for comment, and” slip op. at 7
§ 102 anticipationPatents in suitUS 5,822,523 - Riot Games, Inc. v. Paltalk Holdings, Inc.Rehearing deniedPTAB · Jun 29, 2018 · IPR2018-00130 · APJ Thu A Dang · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in instituting inter partes review of claims 1, 11–15, and 19–30 based on the RFCs’ public accessibility.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Based on the foregoing discussion, Patent Owner fails to show an overlooked or misapprehended material matter amounting to an abuse of discretion in determining Petitioner shows sufficiently that RFC 1692, RFC 1459, and RFC 791 qualify as prior art printed publications. III. CONCLUSION Patent Owner has not carried its burden of demonstrating that we misapprehended or overlooked any material matters in the Decision, and has not shown an abuse of discretion in the Decision to institute an inter partes review of the challenged claims of the ’523 patent. IV. ORDER In consideration of the foregoing, it is hereby ORDERED that Patent Owner’s Request for Rehearing is denied.” slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Crocker’s testimony that the RFCs were available generally prior to the critical date, wherein a skilled artisan could have determined how to access particular RFCs based on mailing lists and newsletters discussing the RFCs. See Dec. 30–32. In particular, Mr. Crocker’s testimony included the (numbered accordingly), the “situation” regarding RFCs and the IETF, as summarized by the court employing, in part, evidence including a 1997 SEC (Securities Exchange Commission”) filing, would not have changed materially prior to the critical date (February, 1996) involved here. following: 1) “an official summary of published RFCs appeared in each issue of the Internet Society’s newsletter” which “was well-known to members of the Internet technical community as a source for an official summary of published RFCs” (id. at 31 (citing Ex. 1026 ¶ 24)); 2) a well-known mailing list announced RFCs to which anyone could subscribe since the late 1980s (id. (citing Ex. 1026 ¶ 21)); and 3) an RFC Editor publication “summarize[d] the status of all Internet protocol and service specifications” wherein “[t]hese RFCs are made publicly available pursuant to the standard RFC publication process” (id. (citing Ex. 1026 ¶ 23)). Mr. Crocker further testifies as follows: “Since the early 1990s, the RFC Editor repository has been freely accessible to the general public with no login, password, or membership requirement, and was similarly available to the Internet technical community since the 1970s.” Id. (citing Ex. 1026 ¶ 26).” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“of our Decision (Paper 11, “Dec.”) to institute inter partes review of claims 1, 11–15, and 19–30 of (the “challenged claims”) of U.S. Patent No. 5,822,523 and 5,822,523 C1 (Ex. 1001, the “’523 patent”). In the Decision, we instituted a trial on the following grounds asserted by Petitioner: 1) claims 1, 15, and 19–27 of the ’523 patent for obviousness over Aldred and RFC 1692; and 2) claims 11–15, 23, and 27–30 of the ’523 patent for obviousness over Aldred, RFC 1692, and Ulrich. Dec. 49. For the reasons stated below, Patent Owner’s Request for Rehearing is denied.” slip op. at 2
§ 102 anticipationPatents in suitUS 5,822,523 - Edwards Lifesciences Corporation v. Boston Scientific Scimed, Inc.Some claims unpatentablePTAB · Jun 28, 2018 · IPR2017-00444 · APJ James A Tartal · IPR · Final written decision
Claims 10, 11, 14, 15, 17–19, 23, 25–28, 31, 33–35, 37, 39, and 40 are unpatentable as obvious; claims 1, 2, 6, 8, and 9 were not shown obvious.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“seeks. See 37 C.F.R. 42.20(c) (“The moving party has the burden of proof to establish that it is entitled to the requested relief.”). First, a motion to exclude deals with the admissibility of evidence under the Federal Rules of Evidence. See 37 C.F.R. §§ 42.62 (applying the Federal Rules of Evidence to inter partes reviews), 42.64; Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,758 (August 14, 2012) (“Admissibility of evidence is generally governed by the Federal Rules of Evidence.”). As stated in the Office Patent Trial Practice Guide, the parties may submit motions to exclude regarding evidence “believed to be inadmissible.” Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,758. Further, a motion to exclude “must explain why the evidence is not admissible (e.g., relevance or hearsay).” Id. at 48,767. Patent Owner has made no showing that the Supplemental Declaration or Petitioner’s Reply are inadmissible. We further agree with prior panels of the Board, which have determined under similar circumstances that a “motion to exclude evidence filed for the purpose of striking or excluding an opponent’s brief and/or evidence that a party believes goes beyond what is permitted under 37 CFR § 42.23 is improper.” Palo Alto Networks, Inc. v. Finjan Inc., Case IPR2015-01979, Paper 62, 66 (PTAB Mar. 15, 2017) (stating that an “allegation that evidence does not comply with 37 CFR § 42.23 is not a sufficient reason under the Federal Rules of Evidence for making an objection and requesting exclusion of such evidence”); see also Blackberry Corp. v. Zipit Wireless, Inc., Case IPR2014-01508, Paper 49, 40 (PTAB Mar. 29, 2016) (“a motion to exclude is not a proper vehicle for a party to raise the issue of arguments exceeding the permissible scope of a reply”).” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Second, if “linear” motion were required, Petitioner has persuasively explained that the dies taught in Yasumi move in the same manner as the dies claimed in the ’560 patent. Ex. 1105 ¶¶ 95–104, 127–129, 136; Ex. 1127 ¶¶ 50–53. We credit the testimony of Mr. Sheehan over Dr. Solar on this point because we find Mr. Sheehan’s testimony to be most consistent with the teachings of Yasumi. Indeed, Patent Owner does not dispute that Yasumi teaches “a rotatable actuation device coupled to the dies,” as claimed, or that rotation of the actuation device causes the aperture to increase or decrease in size. See generally PO Resp. Patent Owner offers no plausible theory in rebuttal, much less any evidence, to suggest that the aperture of Yasumi formed by the inward facing straight sides of the dies increases and decreases with the rotation of the actuation device, but that the faces do not “move inward and reduce the size of the aperture or outward so as to increase the size of the aperture,” as claimed. To the extent Patent Owner is merely arguing that Petitioner has not made the necessary showing, we find such argument in this case unpersuasive as Petitioner has shown by a preponderance of the evidence that Yasumi teaches every limitation of claim 10. See, e.g., Pet. 66 (citing Ex. 1103, 8:42–54).” slip op. at 34
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“We agree with Petitioner that the preamble recitation of “[a] stent crimper comprising” is not limiting as to any of the challenged claims. The preamble language merely provides a name to the claimed invention that describes a use for the invention, whereas the body of each claim describes a structurally complete invention. See Catalina Mktg., 289 F.3d at 809. Because “the preamble offers no distinct definition of any of the claimed invention’s limitations, but rather merely states . . . the purpose or intended use of the invention, . . . the preamble is of no significance to claim construction.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999), citing Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997); Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989); Kropa v. Robie, 187 F.2d 150, 152 (CCPA 1951). Moreover, contrary to Patent Owner’s arguments, the ’560 patent makes clear that the claimed invention is not intended to be limited to a stent crimper. As Petitioner notes, “the specification provides broad disclosure of multiple alternative applications for the invention,” including manipulating other medical devices and as a balloon mold. Pet. Reply. 7–8 (citing Ex. 1101, 2:48–55, 3:14–22, 3:36–37, 8:65–9:62, Figs. 12, 13); Ex. 1101, 2:48–55, 3:16–21, 3:36–37, 8:65–9:62, Figs. 12, 13.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“To the extent Petitioner’s proposal divorces the recited “engaged” from the “operation” of the apparatus, we agree the meaning would be too broad. However, we discern little substantive difference in the arguments made by both parties with regard to what “operatively engaged” encompasses, even if they dispute the full scope of the meaning of the term. There is no reasonable dispute that an element is “operatively engaged” if it is engaged, directly or indirectly, in the operation of the device. See, e.g., Tr. 24:13–25:12; see also Ex. 1126, 60:18–25 (Dr. Solar equating operative engagement to “whether it’s fixed or connected in some manner that explains how that part works”). No further express construction is necessary.” slip op. at 19
Patent outcomesUS 6,915,560 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,915,560
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.