- Telebrands Corp. v. Tinnus Enterprises, LLCAll claims unpatentablePTAB · Dec 30, 2016 · PGR2015-00018 · APJ Richard E Rice · PGR · Final written decision
Claims 1–6, 8, and 10–14 are unpatentable as indefinite under § 112(b); the Board did not reach the § 103(a) grounds.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“II. ANALYSIS A. Level of Skill in the Art Petitioner contends that a person of ordinary skill in the art (“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 science or engineering.” Pet. 15–16 (citing Ex. 1015 ¶¶ 10–13; Ex. 1016 ¶¶ 10–13). Patent Owner responds that “the Board should limit Petitioner’s overly broad definition of a POSA from having an associate’s degree in any science or engineering to having an associate’s degree in mechanical engineering.” See, e.g., PO Resp. 12. According to Patent Owner, “Petitioner’s proposed definition should be limited because the inclusion of persons with an associate’s degree in any science or engineering fails to take into account the scope of the relevant art, which indisputably utilizes mechanical engineering principles.” Id. Upon consideration of the parties’ contentions, we 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.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“1. “elastic fastener” In our Institution Decision, we preliminarily determined that the broadest reasonable interpretation consistent with the Specification of the claim term “elastic fastener” is an elastic element for attaching things together. Inst. Dec. 7–8. As neither party proposes any change to our interpretation, and our review of the evidence does not indicate that any change is necessary, we maintain that interpretation.” slip op. at 8
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable
“We determine that the test for indefiniteness that is applied in patent examination and reexamination matters, approved in Packard, should be applied in this post-grant review AIA proceeding, rather than the Nautilus requirement. The different approaches to indefiniteness before the PTO and the courts stem from the distinct roles that the PTO and the courts play in the patent system.12 In AIA proceedings, as in patent examination and reexamination matters, applying the broadest reasonable interpretation standard, coupled with an opportunity to amend the claims, is an approach that is fair to the patent holder and protects the public. See Cuozzo, 136 S. Ct. at 2145–46; Packard, 751 F.3d at 1312–14. This approach serves to ensure precision in patent claims, thereby helping the public to understand the limits of the claims and keeping the rights afforded by patents within their legitimate scope. See Cuozzo, 136 S. Ct. at 2144–45; Packard, 751 F.3d at 1313. Accordingly, among the reasons supporting application of the Packard-approved indefiniteness test in this AIA proceeding are those recognized by the Supreme Court in Cuozzo as supporting use of the broadest reasonable interpretation standard in inter partes review AIA proceedings. See Cuozzo, 136 S. Ct. at 2143–2146. Of these, the most important is the opportunity to amend the claims to correct any ambiguity. See id. at 2145 (“The patent holder may, at least once in the process, make a motion to do just what he would do in the examination process, namely, necessary) that a person of ordinary skill in the art would not consider the claim language unclear.” 12 See Packard, 751 F.3d at 1325 (Plager, J., concurring) (stating that “unlike courts which have a full prosecution record to consider, the prosecution record before the USPTO is in development and not fixed during examination”). amend or narrow the claim.”) (citation omitted); 35 U.S.C. § 326(d); 37 C.F.R. § 42.221. An applicant’s ability to clarify claim language through amendment was a significant reason why the Federal Circuit in Packard approved of the indefiniteness test recited in the MPEP (i.e., a “claim is indefinite when it contains words or phrases whose meaning is unclear”). Packard, 751 F.3d at 1313–14.” slip op. at 18
- ExcludeMotion to exclude, deniedDenied
“III. MOTIONS TO EXCUDE In its Motion to Exclude (Paper 57), Patent Owner seeks to exclude Petitioner’s Exhibits 1031 and 1032. Paper 57, 1–3. We deny Patent Owner’s motion, as moot, because we did not consider the referenced exhibits in reaching our decision in this case. In its Motion to Exclude (Paper 59), Petitioner seeks to exclude Patent Owner’s Exhibits 2016–2018, 2020 (¶ 84), 2024, 2025 (¶ 39), 2026 (¶ 39), 2027–2070, 2073, 2074, 2078, and 2085. Paper 59, 1–8. We deny Petitioner’s motion, as moot, because we did not consider the referenced exhibits and paragraphs in reaching our decision in this case.” slip op. at 34
Patent outcomesUS 9,051,066 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites NautilusPatents in suitUS 9,051,066 - Front Row Technologies, LLC v. MLB Advanced Media, L.P.Institution deniedPTAB · Feb 22, 2016 · PGR2015-00023 · APJ Carl M Defranco · PGR · Institution
The Board denied institution because claims 1–17 have a 2010 effective filing date and the patent is not eligible for post-grant review.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inventor-to-file provisions of the AIA. AIA § 6(f)(2)(A). And, more specifically, the first-inventor-to-file provisions apply only to patents issuing from applications that have an effective filing date on or after March 16, 2013. AIA § 3(n)(1). As defined by statute, the “effective filing date” for a claimed invention is either: (A) if subparagraph (B) does not apply, the actual filing date of the patent or the application for the patent containing a claim to the invention; or (B) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under section 119, 365(a), or 365(b) or to the benefit of an earlier filing date under section 120, 121, or 365(c). 35 U.S.C. § 100(i)(1) (emphasis added). Here, subparagraph (B) does not apply because the ’638 patent does not cross-reference any other application, let alone claim a right of priority or benefit to another filing date. Ex. 1001. The only filing date indicated on the face of the ’638 patent is January 29, 2010. Id. Thus, subparagraph (A) applies, meaning that the effective filing date of the application for the ’638 patent is its actual filing date of January 29, 2010, well before the March 13, 2013 starting point for eligibility of post-grant review.” slip op. at 2
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for patent owner
“Here, subparagraph (B) does not apply because the ’638 patent does not cross-reference any other application, let alone claim a right of priority or benefit to another filing date. Ex. 1001. The only filing date indicated on the face of the ’638 patent is January 29, 2010. Id. Thus, subparagraph (A) applies, meaning that the effective filing date of the application for the ’638 patent is its actual filing date of January 29, 2010, well before the March 13, 2013 starting point for eligibility of post-grant review. Nonetheless, Front Row argues that the ’638 patent “has an effective filing date of September 23, 2013” because the application for the ’638 patent included claims that “were submitted in an amendment” of that date. Pet. 4. Front Row’s argument is inconsistent with the definition of “effective filing date” (discussed above), which provides expressly that “if subparagraph (B) does not apply,” the effective filing date is the actual filing date of the application for the patent. 35 U.S.C. § 100(i)(1)(A). Nowhere does the statute contemplate that the effective filing date might depend on the date of a later-filed amendment to a claim. Instead, the statute speaks only to “priority” or “earlier” dates, not dates subsequent to the actual filing date. Thus, as a matter of law, if a claim in the application is not entitled to an earlier filing date, then the effective filing date is the actual filing date of the application (per subparagraph (A)), regardless of whether a later-filed amendment to a claim finds sufficient support in the application. Accordingly, without any evidence to the contrary, we hold that the effective filing date for claims 1–17 of the ’638 patent is January 29, 2010, which thereby takes the ’638 patent out of the purview of post-grant review.” slip op. at 3
§ 102 anticipationPatents in suitUS 8,876,638
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.