• Google LLC / Samsung Electronics Co., Ltd. et al. v. Eyesmatch Ltd.No claims unpatentable
  PTAB · Nov 4, 2025 · IPR2025-00297 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1–18 were not shown unpatentable because the prior art did not establish the claimed distance-based variation in the rate of image-processing steps.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for patent owner

    “Putting aside the controversy over alleged impropriety and sandbagging in connection with the District Court’s Order, which we address infra in connection with Patent Owner’s Motion to Strike, we find the District Court’s “mirror-mimicking” construction to be well-reasoned and supported by the record, and we therefore adopt that construction and its reasoning. As the District Court points out, both the “double the distance” and “same size” aspects of its construction are expressly discussed in the ’109 patent. See Ex. 2008, 16 (citing Ex. 1001, 2:5–27, Figs. 5A, 5B). So, too, is “flipping” or reversing of the image disclosed. Id. at 17 (citing Ex. 1001, 14:46–51, 15:41–47). Petitioner does not dispute that the ’109 patent discloses these aspects of “mirror-mimicking,” or even that the District Court’s claim construction is incorrect. Instead, Petitioner contends that “[t]he Board need not construe ‘mirror mimicking’ [beyond plain meaning] since the prior art expressly discloses mimicking a mirror.” Pet. Reply 6. Further. Petitioner characterizes the claim construction order as “a report and recommendation” by a magistrate judge that “the district court judge has not evaluated or adopted.” Id. at 6 n.2.9 We address infra whether the prior art “expressly” discloses “mirror- mimicking” as construed by the District Court. We, however, disagree with Petitioner that we should not construe this term. Given the controversy over whether Petitioner has argued for a different construction in the District Court, we cannot agree that an explicit construction of “mirror-mimicking” is an unnecessary step toward resolving this controversy. See Vivid Techs., Inc., 200 F.3d at 803. We therefore adopt the District Court’s construction for “mirror-” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner

    “We do not agree. Petitioner demonstrates persuasively that a person of ordinary skill would have combined these references “to reduce distortion and provide a realistic mirror image.” Pet. 14–17; Haram Decl. ¶¶ 110–117. We are not persuaded by Patent Owner that by specifically disclosing “flipping” the image, Rosenberg is discouraging or teaching away from performing other transformations to achieve its objective of “replicat[ing] the performance of a standard household mirror.” See PO Resp. 32–33 (Patent Owner asserting lack of motivation to combine the references). A reference may be said to “teach away” “when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Galderma Lab'ys, L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013). “A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the invention claimed. Id. Further, when conducting an obviousness analysis, the Board must consider a prior art reference “not only for what it expressly teaches, but also for what it fairly suggests.” Bradium Techs. LLC v. Iancu, 923 F.3d 1032, 1049 (Fed. Cir. 2019) (quoting In re Baird, 16 F.3d 380, 383 (Fed. Cir. 1994)). We are not convinced that the references before us “teach away” from performing the other transformations.” slip op. at 30

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

  Patent outcomesUS 8,982,109 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,982,109
• Google LLC / Samsung Electronics Co., Ltd. et al. v. Eyesmatch Ltd.No claims unpatentable
  PTAB · Nov 4, 2025 · IPR2024-00856 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1–18 were not shown unpatentable because the cited combinations did not teach or suggest varying the rate of the claimed image-processing steps according to user distance.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “Patent Owner states that it “applies Petitioners’ proposed level of skill for purposes of this Response.” PO Resp. 14 (citing Forsyth Decl. ¶¶ 62– 63). For this Decision, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner and applied by Patent Owner as consistent with the prior art before us in this proceeding.7” slip op. at 13

  • Prior constructionPrior construction adoptedDecided for patent owner

    “Putting aside the controversy over alleged impropriety and sandbagging in connection with the District Court’s Order, which we address infra in connection with Patent Owner’s Motion to Strike, we find the District Court’s “mirror-mimicking” construction to be well-reasoned and supported by the record, and we therefore adopt that construction and its reasoning. As the District Court points out, both the “double the distance” and “same size” aspects of its construction are expressly discussed in the ’109 patent. See Ex. 2008, 16 (citing Ex. 1001, 2:5–27, Figs. 5A, 5B). So, too, is “flipping” or reversing of the image disclosed. Id. at 17 (citing Ex. 1001, 14:46–51, 15:41–47). Petitioner does not dispute that the ’109 patent discloses these aspects of “mirror-mimicking,” or even that the District Court’s claim construction is incorrect. Instead, Petitioner contends that “[t]he Board need not construe ‘mirror mimicking’ [beyond plain meaning] since the prior art expressly discloses mimicking a mirror.” Pet. Reply 6. Further. Petitioner characterizes the claim construction order as “a report and recommendation” by a magistrate judge that “the district court judge has not evaluated or adopted.” Id. at 6 n.2.9 We address infra whether the prior art “expressly” discloses “mirror- mimicking” as construed by the District Court. We, however, disagree with Petitioner that we should not construe this term. Given the controversy over whether Petitioner has argued for a different construction in the District Court, we cannot agree that an explicit construction of “mirror-mimicking” is an unnecessary step toward resolving this controversy. See Vivid Techs., Inc., 200 F.3d at 803. We therefore adopt the District Court’s construction for “mirror-” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner

    “We do not agree. Petitioner demonstrates persuasively that a person of ordinary skill would have combined these references “to reduce distortion and provide a realistic mirror image.” Pet. 14–17; Haram Decl. ¶¶ 110–117. We are not persuaded by Patent Owner that by specifically disclosing “flipping” the image, Rosenberg is discouraging or teaching away from performing other transformations to achieve its objective of “replicat[ing] the performance of a standard household mirror.” See PO Resp. 32–33 (Patent Owner asserting lack of motivation to combine the references). A reference may be said to “teach away” “when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Galderma Lab'ys, L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013). “A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the invention claimed. Id. Further, when conducting an obviousness analysis, the Board must consider a prior art reference “not only for what it expressly teaches, but also for what it fairly suggests.” Bradium Techs. LLC v. Iancu, 923 F.3d 1032, 1049 (Fed. Cir. 2019) (quoting In re Baird, 16 F.3d 380, 383 (Fed. Cir. 1994)). We are not convinced that the references before us “teach away” from performing the other transformations.” slip op. at 30

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

    “We find that Petitioner has not demonstrated by a preponderance of evidence that step 1(h) is taught or suggested by the references cited by Petitioner or the testimony of Petitioner’s expert, Dr. Karam. We agree, instead, with Patent Owner’s argument that “a [person of ordinary skill] would regard the disclosures in Rosenberg relating to proximity detection to be in connection with turning on or off various display modes and not in connection with varying the rate of one or more steps that are performed to transform a series of captured images of a user.” PO Resp. 33 (citing Ex.1005, ¶¶ 25, 32, 56, 69, 114). This distinction was explored during the final hearing. Petitioner’s counsel confirmed that in Rosenberg’s mirror mode, the rate of performing the processing steps does not vary: [THE BOARD]: It’s true that when the -- when Rosenberg is acting in the mirror mode, it’s always at the same rate, correct? It’s always performing those three processing steps at the same rate? [COUNSEL]: Correct. Hearing Tr. 34:13–16. We conclude that Rosenberg fails to disclose or suggest step 1(h) for the reasons given by Patent Owner and summarized above. We agree with Patent Owner’s analysis that in Rosenberg, when the mirror is off the processing steps are not performed, and when the mirror is on, the steps are performed “at an invariant rate.” PO Sur-reply 18–19.” slip op. at 33

  Patent outcomesUS 8,982,109 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,982,109
• Robert Bosch LLC / Mercedes-Benz USA, LLC v. Westport Fuel Systems Canada Inc.No claims unpatentable
  PTAB · Feb 3, 2025 · IPR2023-00292 · APJ Carl M Defranco · IPR · Final written decision

  Claims 1–3, 6, 11, 12, 14, 15, and 18–20 were not shown unpatentable because the asserted combinations failed to establish the claimed substantially constant hydraulic-fluid thickness.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Westport does not dispute Bosch’s proposed definition of the level of skill in the art. PO Resp. 4 (quoting Pet. 23). Based on our review, we see no reason not to adopt Bosch’s undisputed definition of the level of skill in the art, as it appears consistent with the prior art and the specification of the ’829 patent.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Only those claim terms “that are in controversy” need be construed and “only to the extent necessary to resolve the controversy.” AstraZeneca AB v. Mylan Pharms. Inc., 19 F.4th 1325, 1345 (Fed. Cir. 2021) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Here, there does not appear to be a dispute over the meaning of any claim terms. And, after reviewing the record, we do not perceive the need to expressly construe any particular claim term in order to determine patentability of the challenged claims.” slip op. at 9

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “In contrast, the testimony of Bosch’s expert ignores Klügl’s express teachings and is fraught with contradictions that undermine the weight of that testimony. While this case may be seen as a battle of the experts over their respective interpretations of Klügl, it is clear that Bosch’s expert loses given his inability to credibly explain his opinions during cross-examination. For instance, despite opining in his declaration that Klügl satisfies claim element 1(e) because “the fluid in chamber 5 is held in place by a membrane 6 and moves through a cylindrical space of constant width and unchanging shape” (Ex. 1003 ¶ 220 (emphasis added)), surprisingly, Bosch’s expert could not, or would not, provide his opinion when asked on cross-examination about the meaning of “flexible” and “membrane” in the context of Klügl’s disclosure— Q. [By Westport’s counsel] What’s your understanding what flexible means in the context of the Klugl reference? . . . A. [By Bosch’s expert] Again, I haven’t been asked to offer a formal opinion of what flexible means in light of this, but if you want to talk about a specific -- excuse me -- part of the document, I’d be happy to. Q. What is a membrane? A. Usually, it’s a thin sheet of material but I haven’t formed a formal opinion on it. Q. What is a flexible membrane? A. Again, I haven’t offered a formal opinion what a flexible membrane is.” slip op. at 18

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We agree with Westport. That is because Bosch’s argument that Klügl’s hydraulic fluid maintains substantially constant thickness is premised on the erroneous belief that Klügl’s membrane 6 will not flex. But, as Westport correctly notes, Klügl expressly teaches that membrane 6 is “flexible.” See, e.g., Ex. 1006, 7:45–47 (“[F]lexible membranes 6, 8, 26 . . . have a progressive characteristic curve of the spring force in relation to the spring deflection.”), 7:68–9:31 (repeatedly referencing “first flexible element (6)” and “first flexible membrane (6)”). Consistent with this flexibility, Klügl explains that membrane 6 flexes to maintain contact with drive piston 3, stating specifically that “in the rest position without being actuated due to thermal influences or signs of aging, . . . the first membrane 6 is moved in the direction of the drive piston 3” or “is pushed in by the drive piston 3 so that the transmission medium is pressed through the throttle 10 into the compensation chamber 7.” Ex. 1006, 3:63–4:10 (emphases added). And because Klügl’s membrane 6 flexes when transmission module 2 is unactuated, it follows that membrane 6 will also flex when transmission module 2 is actuated.” slip op. at 15

  Patent outcomesUS 6,298,829 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 6,298,829
• Robert Bosch LLC / Mercedes-Benz USA, LLC v. Westport Fuel Systems Canada Inc.No claims unpatentable
  PTAB · Feb 3, 2025 · IPR2023-00293 · APJ Frances L Ippolito · IPR · Final written decision

  Claims 1–3, 6, 13, 14, 17–21, and 26–28, 41 were not shown unpatentable because the asserted combinations did not establish the claimed hydraulic link limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends: A POSITA in the technology field of the ’138 patent would have had a degree in mechanical engineering or a similar discipline, along with 2 years of professional experience working with the design and development of fuel injection systems for internal combustion engines or an equivalent level of skill, knowledge, and experience. (See Ex. 1003, ¶¶ 37–39, 41.) This POSITA would be aware of and generally knowledgeable about how fuel injector valves are structured and operate, and how they are used to deliver fuel to an engine’s combustion chambers. (Id., ¶ 40.) Pet. 23. Patent Owner does not dispute Petitioner’s proposed definition. See PO Resp. 4. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Based on the complete record, we do not perceive the need to construe any claim limitation. Claims must be construed “only to the extent necessary to resolve the controversy.” AstraZeneca AB v. Mylan Pharms. Inc., 19 F.4th 1325, 1345 (Fed. Cir. 2021) (quoting Vivid Techs., Inc. v. American Science & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe the claim preambles here where the construction is not ‘material to the [obviousness] dispute.’” (citations omitted, alteration in original)).” slip op. at 12

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “mere fact” that Klügl labels the membrane as “flexible.” As discussed, Patent Owner explains Klügl teaches membrane 6 is flexible and that membrane 6 deflects and moves in response to fluid pressure in chamber 5 and contact with piston 3. PO Resp. 34 (citing Ex. 1006, 3:63–4:10). Additionally, Dr. Atkinson’s testimony is consistent with Klügl’s disclosure. Dr. Atkinson, explains that “[i]n all embodiments shown, Klügl only ever specifies and describes membrane 6 as a “flexible” membrane or element acknowledging that this flexibility is a necessary and desired feature of its intended purpose and behavior.” Ex. 2022 ¶ 80. With this underlying disclosure in mind, Dr. Atkinson further reasons that a flexible membrane will tend to deform longitudinally upward where it contacts the drive piston and bulge outward based on the structure disclosed in Figure 1. See id. ¶¶ 63, 66–67, 77–81, 87. In contrast, Dr. Quinlan’s testimony in many instances, including this one, is substantively incomplete and fraught with contradictions that undermine the weight of his testimony. For example, at his cross- examination deposition, he testified that he had seen and worked with membranes, but could not provide his opinion on the meaning of “flexible” or “membrane” as disclosed in Klügl. See Ex. 2025, 47:14–48:1. Dr. Quinlan was then directed to column 8 in Klügl, where Klügl teaches among other things that “the transmission module (2) has a pressure chamber (5), which is filled with a transmission medium and is delimited by a first flexible membrane (6).” See id. at 65:5–15; Ex. 1006, 8:44–46 (emphasis added). Provided below is the exchange between Patent Owner’s counsel and Dr. Quinlan regarding this express disclosure: slip op. at 37

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Figure 1 of Klügl depicts an injection valve including housing 12 and piezoelectric actuator 1, which is arranged between upper stop 13 and transmission module 2. Ex. 1006, 1:47–51. We observe that transmission module 2 includes pressure chamber 5 that is at least partially filled with hydraulic fluid and is “delimited” by first membrane 6. Id. at 1:60–62, 1:68–2:2. Throttle or connecting bore 10 connects pressure chamber 5 to compensation chamber 7. Id. at 1:62–66. The connecting bore or throttle allows transmission fluid to flow between pressure chamber 5 and compensation chamber 7. Id. at 3:56–4:10. We further note that Klügl expressly teaches first membrane 6 is “flexible.” Ex. 1006, 7:45–47 (“[F]lexible membranes 6, 8, 26 . . . have a progressive characteristic curve of the spring force in relation to the spring deflection.”). Indeed, consistent with this flexibility, Klügl explains that membrane 6 “moves” to maintain contact with drive piston 3. Specifically, Klügl teaches: [i]f the piezoelectric actuator 1 shortens in the rest position without being actuated due to thermal influences or signs of aging in relation to the housing 12, the spring plate 8 pushes the transmission medium from the compensation chamber 7 via the throttle 10 into the pressure chamber 5, so that the first membrane 6 is moved in the direction of the drive piston 3 and, as a result, the drive piston 3 bears against the first membrane 6 despite the shortening of the piezoelectric actuator 1. However, if the distance between the piezoelectric actuator 1 and the drive piston 3 is reduced, the first membrane 6 is pushed in by the drive piston 3 so that the transmission medium is pressed through the throttle 10 into the compensation chamber 7 against the spring force of the spring plate 8. As a result, the drive piston 3 is always in contact with the first membrane 6 in this case as well. Id. at 3:63–4:10 (emphases added).” slip op. at 34

  Patent outcomesUS 6,575,138 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 6,575,138
• Alphatec Holdings, Inc. / Alphatec Spine, Inc. v. Nuvasive, Inc.No claims unpatentable
  PTAB · Jul 8, 2020 · IPR2019-00546 · APJ Hyun J Jung · IPR · Final written decision

  Claim 16 was not shown unpatentable under either § 103 ground because the petitioner did not establish a sufficient reason to combine the asserted references.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “1059–1062, 1064, and 1065. Mot. 1, 5–8 (discussing Ex. 1064 along with other exhibits). Patent Owner indicates that objections to these exhibits were previously filed. Id. at 1 (citing Papers 23, 36). Patent Owner, as the “moving party,” “has the burden of proof to establish that it is entitled to the requested relief.” 37 C.F.R. § 42.20(c).” slip op. at 8

  • Skill levelSkill level petitioner adoptedOther

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation and internal quotation marks omitted). Based on the full record before us, we see no reason to disturb our preliminary finding regarding the level of ordinary skill in the art. Patent Owner does not expressly provide its own definition of a level of ordinary skill in the art. See PO Resp. 9. Patent Owner also applies Petitioner’s asserted qualifications for one of ordinary skill in the art. See Tr. 27:19– 28:9. Accordingly, we maintain and reaffirm that one of ordinary skill in the art “‘would have a medical degree with two or three years’ experience performing procedures using interbody spinal fusion implants’” or “‘would have a mechanical or biomechanical engineering degree with at least two years’ experience working in developing implant devices and associated instruments with significant access to orthopedic surgeons or neurosurgeons.’” Dec. to Inst. 13 (citing Pet. 28; Ex. 1002 ¶ 18). This level” slip op. at 16

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Frey supports Dr. Youssef’s testimony, and the parties do not dispute, that a lateral X-ray would show alignment of markers 1438 when Frey’s implant is properly aligned in the disc space. Ex 1002 ¶ 161; Ex. 1040 ¶ 156; Ex. 2055 ¶¶ 119, 120. Frey also implicitly supports that a lateral X-ray would show markers 1438 not aligned with each other when Frey’s implant is not properly aligned in the disc space. Ex. 1040 ¶ 156. There is lateral X-ray, and Petitioner does not address Patent Owner’s argument that a fourth radiopaque marker would make a lateral X-ray ambiguous. See Pet. Reply 8–9 (arguing under “Motivation to combine” that other references teach a “central region” and Patent Owner reads the references in isolation). In view of the full record before us, we credit Dr. Youssef’s testimony (Ex. 2055 ¶¶ 114–123) over Dr. Branch’s testimony (Ex 1002 ¶¶ 161, 166) because Dr. Youssef’s opinion is more consistent with the teachings of Frey. Ex. 1040 ¶ 156.” slip op. at 32

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

    “Frey supports Dr. Youssef’s testimony, and the parties do not dispute, that a lateral X-ray would show alignment of markers 1438 when Frey’s implant is properly aligned in the disc space. Ex 1002 ¶ 161; Ex. 1040 ¶ 156; Ex. 2055 ¶¶ 119, 120. Frey also implicitly supports that a lateral X-ray would show markers 1438 not aligned with each other when Frey’s implant is not properly aligned in the disc space. Ex. 1040 ¶ 156. There is lateral X-ray, and Petitioner does not address Patent Owner’s argument that a fourth radiopaque marker would make a lateral X-ray ambiguous. See Pet. Reply 8–9 (arguing under “Motivation to combine” that other references teach a “central region” and Patent Owner reads the references in isolation). In view of the full record before us, we credit Dr. Youssef’s testimony (Ex. 2055 ¶¶ 114–123) over Dr. Branch’s testimony (Ex 1002 ¶¶ 161, 166) because Dr. Youssef’s opinion is more consistent with the teachings of Frey. Ex. 1040 ¶ 156. Petitioner also argues that combining Frey, Michelson, and Baccelli “amounts to nothing more than rearranging known mechanical elements to achieve a predictable result.” Pet. 31 (citing Ex. 1002 ¶¶ 143–144, 148– 150). Even if we were to agree that Petitioner’s proposed combination is a rearrangement of known mechanical elements, as discussed above, placing Petitioner’s a fourth marker at the location that Petitioner proposes would result in an ambiguous lateral X-ray, and the record provides no other support that one of skill in the art would have made this rearrangement. Accordingly, for the reasons above and based on the full record before us, we determine that Petitioner does not present a sufficient reason why one of ordinary skill in the art would have modified Frey in view of Michelson and Baccelli.” slip op. at 32

  Patent outcomesUS 8,187,334 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,187,334
• Lornic Design, Inc. v. Humboldt B.V.No claims unpatentable
  PTAB · May 26, 2020 · IPR2019-00346 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1–5 and 7–22 were not shown unpatentable because Petitioner did not establish that Machacek, Breitschmid, or Plamper was analogous art.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Bonenberger has significant education and experience in industrial engineering and with snap-fit applications. Ex. 1012 ¶¶ 2–5; Ex. 1013; Ex. 2040, 63:24–64:11, 66:13–67:12. Mr. Bonenberger’s testimony about snap-fit connections and their application is potentially helpful in determining the scope of the knowledge of one of ordinary skill in the art and whether the asserted references could be combined. Regarding whether the testimony lacks sufficient basis in facts or data, Mr. Bonenberger’s declaration expressly indicates that Mr. Bonenberger is opining based on his knowledge and experience and providing his opinion of what one of ordinary skill in the art would have understood or would have done. See Ex. 1012 ¶¶ 11 (“I have also relied upon my education, training and experience in the fields of mechanical attachments in general and, in particular, snap-fit attachment development for product applications.”), 14 (“I agree that a PHOSITA will have a bachelor’s degree in mechanical engineering or equivalent work experience.”), 16 (“A PHOSITA would make no such distinction.”), 18 (“For example, there is nothing in the relative forces experienced by the snap-fit in the application of the ‘225 that would lead a PHOSITA to believe . . . ”), 19 (“A PHOSITA would have easily understood . . . ”), 20 (“A PHOSITA would have easily understood . . . ”), 21 (“A PHOSITA would have easily understood . . . ”), 22 (“Both of these are well within the understanding of a PHOSITA.”), 23 (“Such a construction would be well within the understanding of a PHOSITA . . . ”), 25 (“In reviewing Machacek, Breits[ch]mid and Plamper, there is nothing in these patents that would cause a PHOSITA to . . . ”); Ex. 2040, 68:14–21 (Mr. Bonenberger answering “yes” to the question “[s]o, this is an example of your talking from the perspective of what a PHOSITA would understand?”). Mr. Bonenberger has reliably applied the principles and methods to the facts of this proceeding. Furthermore, even if Mr. Bonenberger does not meet the parties’ definition of one of ordinary skill in the art, his testimony, in combination with other record evidence, is useful in determining what he believes one of ordinary skill in the art may have known at the relevant time period about snap-fit connections and their application. Thus, we deny Patent Owner’s Motion to Exclude with respect to Exhibit 1012.” slip op. at 17

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on the full record before us, we see no reason to disturb our preliminary finding regarding the level of ordinary skill in the art. Accordingly, we maintain and reaffirm that one of ordinary skill in the art would have “a bachelor’s degree in mechanical engineering or with equivalent work experience.” Inst. Dec. 10–11 (citing Pet. 11; Ex. 1003 ¶ 46). This level of skill in the art is consistent with the disclosure of the ’225 patent and the prior art of record.” slip op. at 21

  • Prior constructionPrior construction adoptedDecided for petitioner

    “adopted the interpretations quoted above for “female receiving end,” “narrowed entrance,” “the receiving space being substantially larger than the narrowed entrance channel along the longitudinal axis of the whip,” and “the narrowed entrance channel is directed facing away from the profiled side of the whip.” Inst. Dec. 12. Patent Owner agrees with Petitioner that the terms listed in the Petition should have the same interpretations as determined by the district court. PO Resp. 5 (citing Pet. 12). As shown above in emphases, some interpretations include “during use of the brush element.” Petitioner argues that “[n]owhere does the Court require, nor did the Board adopt a definition that requires, that the ‘use’ be the specific cleaning of animal carcasses shown in the ’225 patent.” Pet. Reply 10. We do not need to decide whether the use is specific to cleaning animal carcasses because, even if the use were not so specific, for the reasons set forth below in Section G., we would still determine that Machacek, Breitschmid, and Plamper are not in the same field of endeavor as the ’225 patent, are not reasonably pertinent to the problem facing the inventor of the ’225 patent, and would not have logically commended themselves to the inventor’s attention in considering the problem of the ’225 patent. The full record before us, thus, provides no reason to modify our preliminary decision to adopt the district court’s interpretations for the terms listed and discussed above. We, therefore, continue to apply the above-identified district court’s interpretations for (1) “female receiving space,” (2) “narrowed entrance channel” and “narrowed entrance,” (3) “the receiving space being substantially larger than the narrowed entrance channel along the longitudinal axis of the whip,” and (4) “the narrowed entrance channel is directed facing away from the profiled side of the whip” to resolve the parties’ dispute. Pet. 12–14; Ex. 1011, 16.” slip op. at 23

  • Obviousness (§103) › Analogous artNon analogous artNot shown unpatentable

    “been brought to the attention of the ordinary skilled artisan, the application of Machacek to Debaere, despite the differences in male and female connections and the forces involved, would have been a matter of ordinary skill to a “person of ordinary creativity.” See Pet. 17–19; Pet. Reply 2–8; see also Tr. 45:6–47:2 (Patent Owner’s counsel addressing ordinary skill). However, Petitioner does not argue sufficiently or present sufficient evidence that Machacek logically would have commended itself to the inventor’s attention in considering the problem of the ’225 patent. See Pet. 17–19; Pet. Reply 2–8; Ex. 1003 ¶ 60. Specifically, Petitioner does not present sufficient argument and evidence why one of ordinary skill in the art would have looked to Machacek for a solution to the problem addressed by the ’225 patent or why Machacek’s pinwheel testing device that reduces the risk of transferring blood borne disease logically would have commended itself to an inventor’s attention when considering the problem of replacing brush elements attached to a rotatable body that imparts rotation to the brushes rotatably attached to it. Clay, 966 F.2d at 659. Even considering the structural similarities of Debaere and Machacek, which is Petitioner’s basis for combining the references, the full record does not explain why or how one of ordinary skill in the art would have considered Machacek at all so that the asserted structural similarities would have been perceived or Machacek would have prompted applying a particular connection to Debaere. Scientific Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir. 2014) (“The pertinence of the reference as a source of solution to the inventor’s problem must be recognizable with the foresight of a person of ordinary skill, not with the hindsight of the inventor’s successful achievement.”).” slip op. at 47

  Patent outcomesUS 9,433,225 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,433,225
• General Electric Company v. United Technologies CorporationNo claims unpatentable
  PTAB · Jun 26, 2017 · IPR2016-00531 · APJ Scott A Daniels · IPR · Final written decision

  GE did not prove claims 7–11 unpatentable over Willis and Duesler because it failed to show a skilled artisan would have substituted Duesler’s sleeve into Willis’s engine.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “The difference in opinion between declarants fails mainly to settle on a time frame, i.e. years of experience, in aircraft gas turbine engine design, that a person of ordinary skill in the art would generally have. These positions, however, are not as far afield as they might seem. We recognize from Dr. Abhari’s and Dr. Mattingly’s testimony that gas turbine aircraft engines and their operating conditions are functionally and structurally complex. See Ex. 1003 ¶¶ 21, 53, 55, 60; Ex. 2009 ¶ 38. From the testimony of both declarants we understand that a person of skill in the art of aircraft turbine design is not a newly minted mechanical or aeronautical engineer fresh from undergraduate, or even graduate studies, without a number of years of work experience in the field of aircraft engine design. See Ex. 1003 ¶ 4, and see Ex. 2009 ¶ 40. Our review of the prior art in conjunction with the declarants’ testimony informs us of the complexity of the structural and functional aspects of aircraft engine design and indicates that the level of ordinary skill in the art of aircraft turbofan engine design is fairly high, requiring significant time working in the field. We reconcile the declarants’ inconsistent statements as to years of work experience by determining that a person of ordinary skill in the art of gas turbine engines for aircraft would have a professional background that includes at least an M.S. degree in mechanical or aeronautical engineering and, along with whatever additional engineering background knowledge and skill set they possess, at least 5–10 years of work and study experience in design and analysis of aircraft gas turbine engines. We point out that regardless of the difference in years of experience asserted by the declarants, our ultimate findings and conclusions would be the same under either definition.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “II. CLAIM CONSTRUCTION UTC asserts no construction for any claim terms. See PO Resp. Although GE proposed constructions for a number of claim terms in its Petition (Pet. 12–22), neither party disputes our initial determination that no claim term requires construction. See Inst. Dec. 5, and see Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those 2 GE supports its challenge with the Abhari Declarations (Exs. 1003, 1036). See infra. 3 William S. Willis, Quiet Clean Short-Haul Experimental Engine (QCSEE) Final Report (Aug. 1979) (Ex. 1011). 4 US 5,778,659 (July 14, 1998) (Ex. 1006 or Duesler ’659). terms which are in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 5

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “We are not persuaded, given the apparent necessity for years of testing, regulatory oversight, and necessity to evaluate the overall system and individual components based on stringent structural and functional requirements of an aircraft turbofan engine, that one of ordinary skill in the art would have been motivated to exchange Willis’s hinged flap variable area nozzle for an axially translating sleeve such as Duesler simply because it might be “beneficial to engine performance.” Pet. Reply 9 (citing Ex. 1006, 1:53–55). Apart from the alleged potential to overcome “airflow leakage” and “maneuverability” which are not mentioned as any of the express parameters, goals or system requirements in Willis, neither GE nor Dr. Abhari explain sufficiently how an axially translating sleeve would accommodate the very specific requirements and goals mandated for Willis’s engine such as those shown above in Table 1. We are persuaded based on our review of Willis and the record of this proceeding that Willis’s variable pitch fan and pivoting flap variable area nozzle are together implemented in turbofan aircraft engine in a manner which provides for solving the unique problems of short-haul aircraft systems as described in Willis. Based on our understanding of the principles of operation of Willis’s engine including the necessity for substantial increased reverse-thrust and reduced noise, we find that Duesler’s translating sleeve would alter fundamentally the design of Willis’s engine for short-haul aircraft. Under our rules, expert testimony that does not disclose the underlying facts or data on which an opinion is based is entitled to little or no weight. See 37 C.F.R. § 42.65(a); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,763; Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (nothing in the Federal Rules of Evidence or Federal Circuit jurisprudence requires the fact finder to credit unsupported assertions of an expert witness). We are not inclined to credit such unsubstantiated testimony. In an obviousness analysis, a reason must be given as to why a person of ordinary skill would have been motivated to modify a reference to achieve the patented invention. See Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 (Fed. Cir. 2008). Furthermore, an obviousness determination requires not only a reason to modify a prior art reference, but also that a skilled artisan in doing so would have perceived a reasonable expectation of success in making the invention. See Medichem, S.A., v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). Although GE contends that Dr. Abhari provided sufficient reason to combine, we disagree. See Pet.” slip op. at 28

  Patent outcomesUS 8,511,605 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,511,605
• TC Heartland LLC v. Kraft Foods Group Brands LLCNo claims unpatentable
  PTAB · Nov 3, 2016 · IPR2015-01131 · APJ Toni R Scheiner · IPR · Final written decision

  Claims 1–29 were not shown unpatentable under § 103 over Lohrman and Ackilli because the petitioner did not explain why a skilled artisan would modify Ackilli’s ranges to reach the claimed pH range.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed

    “Petitioner asserts constructions for the following claim terms, “having a pH of about 1.9 to about 2.4,” “flavoring,” and “drip index value.” Pet. 21–23. Patent Owner asserts that we need construe no claim term. PO Resp. 19–20. We agree with Patent Owner that no claim term requires 9 express construction for purposes of rendering a final written decision in this trial.” slip op. at 9

  • Skill levelSkill level board ownOther

    “Ms. Ferruzzi states that one of skill in the art included at least the ability to make the subject matter disclosed in Ackilli. Ex. 1010 ¶¶ 12–13; Pet. 24–25. Ms. Ferruzzi also states that one of skill in the art at the time of the invention also would have the ability “to make predictable use of the compositions and materials described” in Ackilli, and also have the education and experience in food chemistry to have knowledge of the information in Ackilli. Ex. 1010 ¶¶ 12–13; Pet. 25 (adding the ability to make predictable use of the containers described in the art such as Lohrman). Dr. Marvin J. Rudolph, Patent Owner’s declarant, disagrees with Ms. Ferruzzi’s assessment of the level of skill. Ex. 2012 ¶¶ 20–22. Dr. Rudolph asserts that one of skill in the art at the time of the invention would have “at least a Bachelor of Science in Food Science, Chemistry, or Chemical Engineering and at least five years of experience in the design and formulation of consumer beverage products” and “a Bachelor of Science in a packaging science or Mechanical Engineering or at least five years of experience in the design and manufacture of consumer product packaging.” Ex. 2012 ¶ 21. It is not apparent that Ms. Ferruzzi’s and Dr. Rudolph’s definitions relating to flavored beverage liquid concentrates are necessarily disparate. In reviewing the ’557 patent and Ackilli and applying the factors set forth above from Custom Accessories, we find that one of skill in the art who has the education and experience in food chemistry to understand Ackilli and the ’557 patent and can make predictable use of such 16 information, would have at least a Bachelor of Science in Food Science, Chemistry, or Chemical Engineering and at least five years of experience in the design and formulation of consumer beverage products.” slip op. at 16

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

    “overlap or are encompassed by disclosed ranges in the prior art. See Peterson, 315 F.2d at 1329–30 (“Selecting a narrow range from within a somewhat broader range disclosed in a prior art reference is no less obvious than identifying a range that simply overlaps a disclosed range.”). The overlap itself of the disclosed ranges and the claimed ranges provides sufficient motivation to optimize the ranges because of the “normal desire of scientists or artisans to improve upon what is already generally known.” See Peterson, 315 F.3d at 1330. Here, Ackilli, which addresses optimizing dispersion of its flavoring composition concentrates in water, does not mention pH, much less disclose a pH range for the flavoring compositions. See Ex. 1003, 1:10–13. Also, it is clear that Ackilli did not recognize pH as a result-effective variable for compositions as it did not discuss pH. Only if a variable is known to be result-effective is the optimization of the variable within the grasp of one of ordinary skill in the art. Applied Materials, Inc., 692 F.3d at 1295 (citing Antonie, 559 F.2d at 620); In re Boesch, 617 F.2d 272, 276 (CCPA 1980)). Because the Peterson presumption does not apply here, we need to identify where Petitioner offered some articulated reasoning with some rational underpinning to support a conclusion of obviousness. See KSR, 550 U.S. at 418.” slip op. at 30

  • Strike new argumentNew argument disregardedOther

    “We rejected this inherency theory in our Decision on Institution. We recognized that Ackilli does not disclose the pH of any of its disclosed concentrations, and Petitioner had not established that the pH of any of Ackilli’s working samples met the requirements of the challenged claims. Dec. Instit. 18–19. Therefore, we agreed with Patent Owner that Ackilli does not expressly or inherently disclose concentrations meeting the pH range of the challenged claims. Id. In the Declaration submitted with Petitioner’s Reply, Mr. Ackilli offers a new theory for how Ackilli teaches the claimed pH range. Mr. Ackilli testifies that the pH of a beverage is driven by the desired taste profile of the finished beverage and relies on alleged commercial embodiments of the Ackilli reference to prove that the beverage concentrates described in Ackilli included beverage concentrates with a pH in the claimed range. Ex. 1202 ¶¶ 55–61. Including such a new theory and new evidence concerning what a reference teaches is inappropriate at the reply stage. See 35 U.S.C. 312(a)(3); 37 C.F.R. § 41.104. Also, the evidence of the pH of alleged embodiments of the Ackilli reference on sale before the critical date, such as the peach and orange-flavored Water Sensations, is beyond the scope of this inter partes 28 proceeding because such evidence is not a patent or printed publication. See 35 U.S.C. § 311(b) (stating the scope of an inter partes review is limited to challenges under §§ 102 or 103 and “only on the basis of prior art consisting of patents or printed publications”); Tr. 32:24–33:14 (asserting that Water Sensations evidence is beyond scope of Petition).” slip op. at 28

  Patent outcomesUS 8,603,557 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,603,557
• TC Heartland LLC v. Kraft Foods Group Brands LLCNo claims unpatentable
  PTAB · Nov 3, 2016 · IPR2015-01128 · APJ Susan L C Mitchell · IPR · Final written decision

  Claims 1–22 were not shown unpatentable under § 103 over Ackilli because the petitioner did not explain why a skilled artisan would modify Ackilli’s compositions to reach the claimed pH range.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “improved taste (including a lasting taste impression and desirable body), improved palatability, improved keeping qualities, and stabilized flavor and color may be achieved by modifying the compositions of Ackilli to include higher amounts of citric acid and lower amounts of sodium citrate or potassium citrate buffers that result in compositions falling within the scope of the claim. 23 Ex. 1010 ¶ 24. Ms. Ferruzzi, however, cites only two references in support, references that we found a person of ordinary skill would not look to when seeking to modify Ackilli’s beverage concentration. Dec. Instit. 19; see PO Resp. 36 n.8. Without further support as to what one of skill in the art would have known, we do not credit this testimony.” slip op. at 23

  • Strike new argumentNew argument disregardedDecided for patent owner

    “recognize in Ackilli should have been in the Petition.” Tr. 34:23–25. We agree; Petitioner’s assertion of and reliance on Mr. Ackilli’s testimony to establish what one or ordinary skill in the art would have gleaned from Ackilli should have been in the Petition. See 35 U.S.C. § 312(a)(3) (stating that the petition must identify in writing and with particularity the evidence that supports the grounds for the challenge to each claim including affidavits or declarations of supporting evidence and opinions that petitioner relies upon). The fact that an argument may be responsive to Patent Owner’s arguments set forth in its Response does not relieve the Petitioner of its initial burden to identify “with particularity” the “evidence that supports the grounds for the challenge to each claim.” Maxlinear, Inc. v. Cresta Tech. Corp., Case IPR2015-00594, slip op. at 29 (PTAB Aug. 15, 2016) (quoting Intelligent Bio-Systems, 821 F.3d 1359, 1367–68 (Fed. Cir. 2016)); see also 37 C.F.R. § 42.104 (describing required content of the Petition).” slip op. at 19

  • ExcludeMotion to exclude, deniedDenied

    “As Patent Owner notes, we are “well positioned to determine and assign appropriate weight to evidence presented” to us. We agree that the arguments presented in Petitioner’s Motion to Exclude go to the weight that we give the evidence, and therefore, are an improper basis for excluding evidence. For this reason, we dismiss Petitioner’s Motion to Exclude.” slip op. at 25

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Dr. Marvin J. Rudolph, Patent Owner’s declarant, disagrees with Ms. Ferruzzi’s assessment of the level of skill. Ex. 2012 ¶¶ 20–22. Dr. Rudolph asserts that one of skill in the art at the time of the invention would have “at least a Bachelor of Science in Food Science, Chemistry, or Chemical Engineering and at least five years of experience in the design and formulation of consumer beverage products.” Ex. 2012 ¶ 21. It is not apparent that Ms. Ferruzzi’s and Dr. Rudolph’s definitions are necessarily disparate. In reviewing the ’299 patent and Ackilli and applying the factors set forth above from Custom Accessories, we find that one of skill in the art who has the education and experience in food chemistry to understand Ackilli and the ’299 patent and can make predictable use of such information, would have at least a Bachelor of Science in Food Science, Chemistry, or Chemical Engineering and at least five years of experience in the design and formulation of consumer beverage products.” slip op. at 10

  Patent outcomesUS 8,293,299 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,293,299
• Jackel International Limited / Mayborn USA, Inc. v. Admar International, Inc.No claims unpatentable
  PTAB · Sep 21, 2016 · IPR2015-00979 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1–5, 7–12, and 14 were not shown unpatentable under § 103 because the cited references did not teach or suggest the claimed spout.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “In summary, we find that the extrinsic evidence cited by Patent Owner indicates that the ordinary and customary meaning of “spout,” as would have been understood by one of ordinary skill in the art in the context of the entire disclosure of the ’841 patent, is “a tube or lip projecting from a container, through which liquid can be poured and through which a user drinks” (see Ex. 1001 at 2:6–11, 5:11–13, 5:60–67, 6:2–7, 6:17–23, 10:5–8, Figs. 1, 2, 5, 11–14, claims 1, 8; Ex. 2011, 1688) and does not include a nipple (see Ex. 2022 at 5–8, Figs. 1–3; Valderrama Decl. ¶¶ 91–94). Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2011) (“Even under the broadest reasonable interpretation, the Board’s construction ‘cannot be divorced from the specification and the record evidence,’ and ‘must be consistent with the one that those skilled in the art would reach.’”). Accordingly, based on the complete record before us, we interpret “spout” to mean “a tube or lip projecting from a container, through which liquid can be poured and through which a user drinks” and does not encompass a nipple.” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “For the reasons discussed above in Section II.A, we determine that the broadest reasonable interpretation in view of the ’841 patent’s specification of “spout” to be “a tube or lip projecting from a container, through which liquid can be poured and through which a user drinks” and does not encompass a nipple. We agree with Patent Owner that liquid cannot be poured through a nipple. PO Resp. 10 (“Spouts are intended for a stream of liquid, while nipples are intended for liquid to seep.”); see also Tr. 24:2– 26:3, 29:12–16 (arguing liquids are poured through a spout); Ex. 1022 at 140:1–12 (Mr. Valderrama testifying that Raymond and Mutti do not have a spout); Ex. 2026, 34:20–35:15, 50:23–51:7 (Dr. Brown testifying that Raymond does not refer to a spout). We find that liquid cannot be poured through Petitioners’ asserted spout (Pet. 18 (citing Ex. 1002 ¶ 32; Ex. 1003 at 5:17–20, Fig. 2)). The full record persuades us that Petitioners’ asserted spout in Raymond and similar structure in Mutti do not teach or suggest the spout of claim 1. See PO Resp. at 28–30 (citing Valderrama Decl. ¶¶ 135– 138; Ex. 1005, Fig. 2–4; Ex. 2026, 27:24–25:16, 86:10–25). Therefore, we find that Raymond fails to teach or suggest the spout of claim 1, as argued by Petitioners. Petitioners rely on Mutti to teach slits that would be understood to be self-sealing. Pet. 19–20 (citing Ex. 1002 ¶ 69; Ex. 1004, Figs. 10–11). Petitioners’ reliance on Mutti does not remedy the deficiency discussed above regarding the “spout” of claim 1.” slip op. at 21

  • ExcludeMotion to exclude, deniedDenied

    “Declaration of Stuart Brown (Ex. 1002)” because Patent Owner contends that “Dr. Brown admittedly has no experience in the design or development of the no-spill cups at issue in the ’841 patent” and “thus no basis to render an opinion of a person ordinarily skilled in the art.” Paper 31, 1. Petitioners respond that Patent Owner “failed to make a timely objection within ten business days of the institution of trial in this matter as required by 37 C.F.R. 42.64(b)(1)” and that Dr. Brown “is more than qualified to opine as a technical expert witness in the relevant art.” Paper 30, 1. Patent Owner filed a Reply (Paper 34). We agree with Petitioners that Patent Owner’s Motion to Exclude is not in compliance with 37 C.F.R. § 42.64(b). Even if Patent Owner’s Motion complied with our rules, however, as discussed above, we considered the Brown Declaration against the full record and gave it appropriate weight. And even having considered the relevant portions of the Brown Declaration, we are persuaded by Patent Owner’s arguments regarding whether the relied upon references teach or suggest “spout.” We, thus, deny Patent Owner’s Motion to Exclude.” slip op. at 26

  • Strike new argumentNew argument consideredDecided for petitioner

    “We agree with Petitioners that the portions of Petitioners’ Reply identified by Patent Owner are properly responsive to arguments presented by Patent Owner in its briefs. Also, to the extent any of the identified portions can be deemed new arguments, even when those new arguments are considered, as discussed above, we are nevertheless persuaded by Patent Owner’s arguments regarding whether the relied upon references teach or suggest “spout,” and so the objection is overruled.” slip op. at 25

  Patent outcomesUS 8,695,841 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,695,841

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.