- Google LLC v. Ipa Technologies Inc.Rehearing deniedPTAB · Dec 20, 2018 · IPR2018-00475 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Google’s rehearing request and left in place denial of institution because the Petition did not show Cheyer was publicly accessible prior art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“trial is set forth in 37 C.F.R. § 42.71(c), which provides in relevant part: “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Section 42.71(c), in turn, references 37 C.F.R. § 42.71(d), which provides a 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 a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“There is no evidence that whatever version of Cheyer (if any) was linked on the SRI website was ever downloaded, or that a search engine could have been used to find it. Thus, even if we were to assume that Cheyer was available online (i.e., technical availability), Petitioner fails to point to any persuasive evidence of public accessibility to the document or the SRI website.” slip op. at 5
- Other 314aDenied
“request, or panels to authorize, an expanded panel. See generally 35 U.S.C. § 6; 37 C.F.R. §§ 41.1–42.412. The Chief Judge may consider panel expansions upon a “suggestion” from a judge, panel, or party. PTAB SOP 1,” slip op. at 11
§ 102 anticipationDiscretionary denialPatents in suitUS 6,742,021 - Google LLC v. Ipa Technologies Inc.Rehearing deniedPTAB · Dec 20, 2018 · IPR2018-00384 · APJ Thomas L Giannetti · IPR · Rehearing
The Board denied Google’s rehearing request, leaving institution denied for claims 1–18 because the petition did not show Cheyer was publicly accessible and qualified as prior art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“trial is set forth in 37 C.F.R. § 42.71(c), which provides in relevant part: “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Section 42.71(c), in turn, references 37 C.F.R. § 42.71(d), which provides a 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 a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“trial is set forth in 37 C.F.R. § 42.71(c), which provides in relevant part: “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Section 42.71(c), in turn, references 37 C.F.R. § 42.71(d), which provides a 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 a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“There is no evidence that whatever version of Cheyer (if any) was linked on the SRI website was ever downloaded, or that a search engine could have been used to find it. Thus, even if we were to assume that Cheyer was available online (i.e., technical availability), Petitioner fails to point to any persuasive evidence of public accessibility to the document or the SRI website.” slip op. at 5
§ 102 anticipationPatents in suitUS 6,523,061 - Google LLC v. Ipa Technologies Inc.Rehearing deniedPTAB · Dec 20, 2018 · IPR2018-00474 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Google’s rehearing request, leaving institution denied on all challenged claims because Cheyer was not shown reasonably likely to have been publicly accessible as prior art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“trial is set forth in 37 C.F.R. § 42.71(c), which provides in relevant part: “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Section 42.71(c), in turn, references 37 C.F.R. § 42.71(d), which provides a 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 a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“we denied the Petition as to all claims. We determined that Petitioner had failed to satisfy its burden of demonstrating a reasonable likelihood of showing, under 35 U.S.C. § 102(b), that its principal reference, Cheyer,1 was disseminated or publicly accessible prior to one year before the effective filing date of the ’021 patent and, therefore, did not qualify as prior art under 35 U.S.C. § 102(b). Dec. 6–15.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“There is no evidence that whatever version of Cheyer (if any) was linked on the SRI website was ever downloaded, or that a search engine could have been used to find it. Thus, even if we were to assume that Cheyer was available online (i.e., technical availability), Petitioner fails to point to any persuasive evidence of public accessibility to the document or the SRI website. Id. at 14.” slip op. at 5
- Other 314aDenied
“request, or panels to authorize, an expanded panel. See generally 35 U.S.C. § 6; 37 C.F.R. §§ 41.1–42.412. The Chief Judge may consider panel expansions upon a “suggestion” from a judge, panel, or party. PTAB SOP 1,” slip op. at 11
§ 102 anticipationDiscretionary denialPatents in suitUS 6,742,021 - Google LLC v. Ipa Technologies Inc.Rehearing deniedPTAB · Dec 20, 2018 · IPR2018-00476 · APJ Debra K Stephens · IPR · Rehearing
The Board denied Google's rehearing request, leaving institution denied for claims 1–27 because Cheyer was not shown reasonably likely to qualify as publicly accessible prior art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“trial is set forth in 37 C.F.R. § 42.71(c), which provides in relevant part: “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Section 42.71(c), in turn, references 37 C.F.R. § 42.71(d), which provides a 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 a motion, an opposition, or a reply” (37 C.F.R. § 42.71(d)). The party challenging a decision bears the burden of showing the decision should be modified (id.).” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot reached
“how to retrieve Cheyer, included in Moran’s footnote citation, did not persuade us that Cheyer was publicly accessible (id. at 15; see Pet. 3)). Importantly, we note Petitioner has not shown the link provided in the footnote worked, or that the link, which is to a “Bibliography” page (see Ex. 1029), provided Cheyer’s paper or a publicly accessible link to Cheyer’s paper. In particular, Petitioner does not provide a copy of this Bibliography page to show what actually was on this page and how or if an ordinarily skilled artisan would have been able to access Cheyer’s paper from the Bibliography page. In our Decision, we noted Petitioner failed to provide testimonial or other evidence that the link provided in the article actually worked at the relevant time period, what content was included at the linked website, how one would find Cheyer after selecting the link, or which version of Cheyer allegedly was accessible via the link (Dec. 15). We also explained that this latter showing is of special importance here because Petitioner acknowledges that there were several different versions of Cheyer (id. at 12 (citing Pet. 3)).” slip op. at 8
- Strike new argumentNew argument disregardedDecided for patent owner
“professional computer scientist or engineer directed to find an article on a section of a website would have been unable to do so with reasonable diligence” (id. at 7–8). Petitioner’s argument fails for several reasons. First, it is a new argument not appropriately raised on rehearing. Second, Petitioner identifies no support in the record for the assertion that Cheyer was actually available (see Ex. 2001 and 2002) or that an ordinarily skilled artisan would have been able to find Cheyer, only Petitioner’s speculation.2 Finally, this argument overlooks that the burden is on Petitioner, not the Board, to demonstrate a reasonable likelihood of prevailing on this issue.” slip op. at 7
§ 102 anticipationPatents in suitUS 6,757,718 - Microsoft Corporation v. Ipa Technologies Inc.Rehearing deniedPTAB · Nov 8, 2018 · IPR2018-00793 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, finding no abuse of discretion in timely issuing the institution decisions before resolving the § 315(b) time-bar contention.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“III. STANDARD OF REVIEW Pursuant to 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d).” slip op. at 5
- PTAB / AIA Trials › §315(b) time barNot reached
“telephone conference call with the Board, “put at issue” the question whether an inter partes review may not be instituted under 35 U.S.C. § 315(b) because Petitioner, a real party in interest, or a privy of Petitioner was served with a complaint alleging infringement of the ’021 patent more than one year prior to the filing of the Petition. See, e.g., Req. Reh’g 10 (contending that Patent Owner put § 315(b) at issue). Patent Owner has not. During the September 17th conference call, Patent Owner mentioned several documents, including indemnification policies, license agreements, and correspondence as materials that Patent Owner is either aware of or seeking from Petitioner. See, e.g., Ex. 2001, 6:24–8:3 (discussing these documents), 10:19–11:14 (same). Neither party, however, has placed those documents in evidence, nor has Patent Owner advanced its argument regarding § 315(b) in any briefing. See World Inc. v. Bungie, Inc., 903 F.3d 1237, 1244 (Fed. Cir. 2018) (“We agree, however, that a patent owner must produce some evidence that tends to show that a particular third party should be named a real party in interest. A mere assertion that a third party is an unnamed real party in interest, without any support for that assertion, is insufficient to put the issue into dispute.” (footnote omitted)). Thus, at this time, Patent Owner has not “put at issue” whether Petitioner is barred under § 315(b). Additionally, Patent Owner’s Rehearing Request fails to identify where it previously raised the question of § 315(b) in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d). As explained above, Patent Owner has not. Thus, we could not have misapprehended or overlooked an issue not raised previously.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“V. CONCLUSION For the foregoing reasons, Patent Owner has not shown that we abused our discretion by timely issuing institution decisions in the five cases captioned above. Nothing in this Decision precludes Patent Owner from advancing its § 315(b) contention in its post-institution submissions.” slip op. at 7
NonePatents in suitUS 6,742,021 - Microsoft Corporation v. Ipa Technologies Inc.Rehearing deniedPTAB · Nov 8, 2018 · IPR2018-00792 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, finding no abuse of discretion in timely issuing institution decisions and leaving the § 315(b) contention open for post-institution submissions.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“III. STANDARD OF REVIEW Pursuant to 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d).” slip op. at 5
- PTAB / AIA Trials › §315(b) time barNot reached
“than one year prior to the filing of the Petition. See, e.g., Req. Reh’g 10 (contending that Patent Owner put § 315(b) at issue). Patent Owner has not. During the September 17th conference call, Patent Owner mentioned several documents, including indemnification policies, license agreements, and correspondence as materials that Patent Owner is either aware of or seeking from Petitioner. See, e.g., Ex. 2001, 6:24–8:3 (discussing these documents), 10:19–11:14 (same). Neither party, however, has placed those documents in evidence, nor has Patent Owner advanced its argument regarding § 315(b) in any briefing. See World Inc. v. Bungie, Inc., 903 F.3d 1237, 1244 (Fed. Cir. 2018) (“We agree, however, that a patent owner must produce some evidence that tends to show that a particular third party should be named a real party in interest. A mere assertion that a third party is an unnamed real party in interest, without any support for that assertion, is insufficient to put the issue into dispute.” (footnote omitted)). Thus, at this time, Patent Owner has not “put at issue” whether Petitioner is barred under § 315(b). Additionally, Patent Owner’s Rehearing Request fails to identify where it previously raised the question of § 315(b) in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d). As explained above, Patent Owner has not. Thus, we could not have misapprehended or overlooked an issue not raised previously.” slip op. at 7
NonePatents in suitUS 6,742,021 - Microsoft Corporation v. Ipa Technologies Inc.Rehearing deniedPTAB · Nov 8, 2018 · IPR2018-00791 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, finding no abuse of discretion in issuing the institution decisions before resolving the § 315(b) time-bar contention.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“deadline set forth in 35 U.S.C. § 314(b). Req. Reh’g 10 n.2. Patent Owner contends that “[t]he deadline under 35 U.S.C. § 314(b) should not be an obstacle because Congress has recognized that there should be some flexibility with respect to deadlines.” Id. (citing 35 U.S.C. § 316(a)(11)). Section 316(a)(11) provides up to six additional months to issue a final written decision when good cause is shown. Section 316(a)(11) does not, however, address extending the three-month time period after a preliminary response is filed to issue an institution decision. That three-month time period is governed by § 314(b), and Patent Owner fails to offer any support for its argument that we can extend the deadline under § 314(b). Accordingly, we are unaware of any statutory authority by which we may extend the deadline to determine whether to institute an inter partes review under § 314(b), even with a showing of good cause.” slip op. at 6
- PTAB / AIA Trials › §315(b) time barNot reached
“than one year prior to the filing of the Petition. See, e.g., Req. Reh’g 10 (contending that Patent Owner put § 315(b) at issue). Patent Owner has not. During the September 17th conference call, Patent Owner mentioned several documents, including indemnification policies, license agreements, and correspondence as materials that Patent Owner is either aware of or seeking from Petitioner. See, e.g., Ex. 2001, 6:24–8:3 (discussing these documents), 10:19–11:14 (same). Neither party, however, has placed those documents in evidence, nor has Patent Owner advanced its argument regarding § 315(b) in any briefing. See World Inc. v. Bungie, Inc., 903 F.3d 1237, 1244 (Fed. Cir. 2018) (“We agree, however, that a patent owner must produce some evidence that tends to show that a particular third party should be named a real party in interest. A mere assertion that a third party is an unnamed real party in interest, without any support for that assertion, is insufficient to put the issue into dispute.” (footnote omitted)). Thus, at this time, Patent Owner has not “put at issue” whether Petitioner is barred under § 315(b). Additionally, Patent Owner’s Rehearing Request fails to identify where it previously raised the question of § 315(b) in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d). As explained above, Patent Owner has not. Thus, we could not have misapprehended or overlooked an issue not raised previously.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Owner”) filed a Request for Rehearing and Reconsideration (“Rehearing Request” or “Req. Reh’g”)2 of our Decision instituting inter partes review (“Decision” or “Dec.”).3 In instituting the inter partes reviews, we determined that Petitioner established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims of each challenged patent. See, e.g., Dec. 2, 22.” slip op. at 2
NonePatents in suitUS 6,742,021 - Microsoft Corporation v. Ipa Technologies Inc.Rehearing deniedPTAB · Nov 8, 2018 · IPR2018-00794 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied the Patent Owner’s rehearing requests, finding no abuse of discretion in issuing the institution decisions before resolving the § 315(b) time-bar contention.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“III. STANDARD OF REVIEW Pursuant to 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d).” slip op. at 5
- PTAB / AIA Trials › §315(b) time barNot reached
“telephone conference call with the Board, “put at issue” the question whether an inter partes review may not be instituted under 35 U.S.C. § 315(b) because Petitioner, a real party in interest, or a privy of Petitioner was served with a complaint alleging infringement of the ’021 patent more than one year prior to the filing of the Petition. See, e.g., Req. Reh’g 10 (contending that Patent Owner put § 315(b) at issue). Patent Owner has not. During the September 17th conference call, Patent Owner mentioned several documents, including indemnification policies, license agreements, and correspondence as materials that Patent Owner is either aware of or seeking from Petitioner. See, e.g., Ex. 2001, 6:24–8:3 (discussing these documents), 10:19–11:14 (same). Neither party, however, has placed those documents in evidence, nor has Patent Owner advanced its argument regarding § 315(b) in any briefing. See World Inc. v. Bungie, Inc., 903 F.3d 1237, 1244 (Fed. Cir. 2018) (“We agree, however, that a patent owner must produce some evidence that tends to show that a particular third party should be named a real party in interest. A mere assertion that a third party is an unnamed real party in interest, without any support for that assertion, is insufficient to put the issue into dispute.” (footnote omitted)). Thus, at this time, Patent Owner has not “put at issue” whether Petitioner is barred under § 315(b).” slip op. at 6
NonePatents in suitUS 6,742,021 - Microsoft Corporation v. Ipa Technologies Inc.Rehearing deniedPTAB · Nov 8, 2018 · IPR2018-00734 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, finding no abuse of discretion in timely instituting review; Patent Owner may raise its § 315(b) contention in post-institution submissions.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“III. STANDARD OF REVIEW Pursuant to 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d).” slip op. at 5
- PTAB / AIA Trials › §315(b) time barNot reached
“than one year prior to the filing of the Petition. See, e.g., Req. Reh’g 10 (contending that Patent Owner put § 315(b) at issue). Patent Owner has not. During the September 17th conference call, Patent Owner mentioned several documents, including indemnification policies, license agreements, and correspondence as materials that Patent Owner is either aware of or seeking from Petitioner. See, e.g., Ex. 2001, 6:24–8:3 (discussing these documents), 10:19–11:14 (same). Neither party, however, has placed those documents in evidence, nor has Patent Owner advanced its argument regarding § 315(b) in any briefing. See World Inc. v. Bungie, Inc., 903 F.3d 1237, 1244 (Fed. Cir. 2018) (“We agree, however, that a patent owner must produce some evidence that tends to show that a particular third party should be named a real party in interest. A mere assertion that a third party is an unnamed real party in interest, without any support for that assertion, is insufficient to put the issue into dispute.” (footnote omitted)). Thus, at this time, Patent Owner has not “put at issue” whether Petitioner is barred under § 315(b).” slip op. at 7
NonePatents in suitUS 6,523,061 - 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
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.